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 .
Applicants' arguments, filed 10/27/2023, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim Rejections - 35 USC § 103--Previous
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 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) 1-6, 19 remain rejected under 35 U.S.C. 103 as being unpatentable over Shear et al., (US 9,173,941).
Shear teaches a “sustained release composition to deter animal wound licking comprising a lotion comprising: from about 50 to 99 wt.% humectant; from about 1 to 50 wt.% water; from about 0.001 to 5.00 wt.% bittering agent; from about 0 to 25 wt.% oil; from about 25 to 1 wt.% surfactant” (col. 8, claim 10), “wherein the surfactant has a HLB of less than 4” (col. 2, lines 14-24).
Accordingly, the ratio of surfactant to oil can fall within the claimed range of about 1:1 to about 10:1, wherein the combination of surfactant and oil falls within the claimed range of about 50 to 100 wt.%.
The reference teaches a specific embodiment comprising citation 70 mineral oil, Atmos 300 surfactant, 70% sorbitol (active agent insofar as sorbitol has antimicrobial properties)(see Example 1, Table 1). Atmos 300 surfactant, a combination of mono- and di-glycerides, has an HLB of 2.8, as per claim 14 (see Specification, p. 4, para. [0012]).
Use of a container would have been obvious to a person having ordinary skill in the art as a means for storing and/or administering the composition to an animal. Shear for example uses a “bowl” to contain the lotion (see col. 6, line 66).
Essential oil, as per claim 3, may be used as an active insofar as the prior art teaches adding “1-menthol” as an analgesic (see col. 4, line 5).
Oil, as per claim 5, generally has a density less than 1 g/mL; mineral oil, as per Example 1, has a density between 0.83 and 0.91 g/ml.
Since the prior art compositions comprise an oil, it is capable of adhering to the wet tongue and mouth tissue, as per claim 6, when consumed by the animal.
Active agents also include “hydrogen peroxide”, which is known for treating plaque and tartar, as per claim 19.
The prior art is not anticipatory insofar as it does not provide a specific embodiment where the surfactant and oil are from 50 to 100 wt.% of the composition; however, it would have been obvious to provide a composition with surfactant and oil within that range in view of ranges disclosed for surfactant and oil in the prior art.
In regard to the amendment requiring “an HLB of about 6.0”, MPEP 2144.05 states that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).”
In this case, an HLB of less than 4 is close enough to the requirement of an HLB of about 6 to expect the same properties. Evidentially, the specification prefers use of the same surfactant taught by the prior art, i.e. Atmos®-300, which as an HLB of 2.8 (see Specification at p. 4, para. [0012]; p. 6, para. [0020] and Examples 1-3). The specification also states, “because it contains oil and a surfactant having an HLB of about 6 or less, is a separate phase from water, and because it is less dense than water, floats on top of the water phase” (p. 3, para. [0010]). Since the prior art combines an oil phase, water phase, and surfactant, the oil, which is inherently less dense than water, is expected to also float on top of the water phase.
The specification also teaches, “The preferred surfactant is glyceryl monosteareate and has an HLB of about 5.8” (p. 4,para. [0013]), which is the sole example of a surfactant alleged to have an HLB of about 6, as claimed; however, glyceryl monostearate is taught in the prior art to have an HLB of 3.8, as shown in the Technological Background below. Accordingly, the prior art teaching of surfactants having an HLB of less than 4 would reasonably be expected to provide the same properties as applicant’s invention.
Technological Background
1) The prior art made of record and is considered pertinent to applicant's disclosure Glace et al., (US 6,331,291). Glace et al. is pertinent for teaching, “It has been determined in respect to this invention, a superior cleaning of plaque and tartar is accomplished by the presence in the formulation of hydrogen peroxide” (col. 20, lines 4-7).
2) The prior art made of record and is considered pertinent to applicant's disclosure Dokuzovic et al., (US 4,752,481). Dokuzovic et al. is pertinent for teaching, “Specific compounds and their respective HLB values include glycerol monooleate (2.8); propylene glycol monostearate (3.4), glycerol monostearate (3.8), lecithin (4.2)” (col. 5, lines 34-37).
Response to Arguments
Applicant argues, “Shear neither discloses nor suggests a surfactant comprises a non-water soluble surfactant with an HLB of about 6.0” (p. 4).
However, as stated above, use of surfactants with an HLB of 4 or less is close enough to the claimed invention reasonably expect the same properties, and there is nothing of record to suggest otherwise.
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 WALTER E WEBB whose telephone number is (571)270-3287. The examiner can normally be reached Mon-Fri 7-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frederick Krass can be reached on (571)272-0580. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WALTER E WEBB/Primary Examiner, Art Unit 1612