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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 8-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural composition of matter without significantly more.
Claim 1 recites an argan oil blend comprising about 75% to 99% of a natural oil, about 1% to 25% of an essential oil, wherein the natural oil comprises 3% to 20% argan oil. Claims 8-10 further limit the concentrations of the natural oil blend and essential oil.
These instantly claimed limitations are drawn to a product of nature, namely naturally occurring oils found in plants including Argania spinosa. Extraction of oils from plants only concentrates and portions the naturally occurring compounds in the plants. While the oils themselves may not be found in nature, the compounds which are present in the plant and oil are found in nature. The creation of an oil blend only partitions and concentrates the molecules that are naturally occurring in the plant. There is no evidence or reason to expect that any new compounds are formed. Thus, a claim to an oil blend would tie up and monopolize a subset of compounds that are naturally present in the plant. As such, the instantly claimed argan oil blend does not amount to an exception of the judicial exception, because isolation or purification does not result in a product which is “markedly different” from the naturally-occurring component. Thus, while extraction of the oils would separate a portion of the plant matter away from the naturally occurring ingredients, the result of the extraction is still a mixture of ingredients which are naturally found in the plant material; i.e., the compounds are not inventive or “man-made”. Please note that in Myriad, excising DNA to isolate the DNA from its natural source did not constitute a product which was “markedly different” from the naturally occurring DNA even though the excised ends of the DNA were different in structure when compared to native DNA (see Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-91, 106 USPQ2d 1972, 1978-79 (2013)).
Based on all of the foregoing, claims 1 and 8-10 are drawn to mixtures of naturally occurring products and are therefore drawn to judicial exceptions. There are no structural limitations in the claims in addition to the oils containing naturally occurring ingredients.
As such, claims 1 and 8-10 are rejected.
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 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ma (US 2021/0268110) in view of Petkoska et al. (US 2023/0293423, effectively filed 29 April 2015).
Claim 1 is drawn to an argan oil blend hair treatment comprising:
about 75% to about 99% (more specifically about 90% to about 96% (claims 8-10)) by weight of a natural oil combination and;
about 1% to about 25% (more specifically about 4% to about 10% (claims 8-10) by weight of an essential oil combination,
wherein the natural oil combination includes about 3% to 20% argan oil based on a weight of the argan oil blend hair treatment.
Claim 5 is drawn to the argan oil blend of claim 1, wherein the essential oil combination comprises at least four oils from the group including clove, rosemary, thyme, and chamomile maroc essential oils.
Claim 11 is drawn to an argan oil blend hair treatment comprising:
about 80% to about 98% by weight of a natural oil combination;
about 2% to about 20% by weight of an essential oil combination;
wherein the natural oil combination includes argan oil and one or more of sunflower oil, canola oil, coconut oil, castor oil, black seed oil, and vitamin E.
Claim 12 is drawn to the argan oil blend of claim 11, wherein the natural oil combination comprises argan oil, sunflower oil, and one or more of canola oil, coconut oil, castor oil, black seed oil, and vitamin E.
Ma teaches oil-based compositions (Claim 1) for the application to the skin or hair (Par. [0011, 0030]). Ma teaches in claims 10-12 a composition comprising:
a base composition comprising sunflower seed oil, coconut oil, and macadamia nut oil in an amount of 50% to 99% of the formulation; and
a blend of essential oils including clove, rosemary, thyme, and Moroccan chamomile in an amount of about 2.2% to about 50% of the formulation.
The composition of Ma differs from the instantly claimed composition in the following ways:
the composition of Ma does not comprise argan oil.
Yet, as to 1: Petkoska et al. also teach oil compositions for application to the skin, wherein the natural oils protect the skin from high energy visible light (Abstract). Petkoska et al. further teach that argan oil by itself or in combination with other oils provides protection from a wide spectrum of light (Fig. 3), further teaching that argan oil provides excellent antioxidant behavior, anti-inflammatory behavior, and regulation of healthy skin (Pars. [0310-12]). Petkoska et al. further teach that varying the amount of the oils in a formulation can change the absorbance behavior of the formulation, and thus the skin protecting capabilities of the formulation (Figs. 22-23; Pars. [0339-0340]), indicating that the concentration of oils in the formulation is a result effective variable.
And, as discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Ma to include 3% to 20% of argan oil. It would have been obvious to combine the known oil composition with the known use of argan oil for application to the skin to obtain the predictable result of a composition with excellent antioxidant behavior, anti-inflammatory behavior, and regulation of healthy skin, with a reasonable expectation of success. Further, it would have been obvious to optimize the amount of argan oil in the composition to obtain the desired result of protection from high energy light.
Based on all of the foregoing, claims 1, 5, and 8-12 are rejected as prima facie obvious.
Claim 2 is drawn to the argan oil blend of claim 1, wherein the natural oil combination further comprises 20% to about 45% by weight sunflower oil.
Ma teaches does not explicitly teach the amount of sunflower oil in the composition.
However, Petkoska et al. teach that varying the amount of the oils in a formulation can change the absorbance behavior of the formulation, and thus the skin protecting capabilities of the formulation (Figs. 22-23; Pars. [0339-0340]), indicating that the concentration of oils in the formulation is a result effective variable.
And, as discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Ma to comprise 20% to about 45% of sunflower seed oil. It would have been obvious to optimize the concentration of sunflower oil in the composition to obtain the desired light protecting capability of the composition, with a reasonable expectation of success.
As such, claim 2 is also rejected as prima facie obvious.
Claim 3 is drawn to the argan oil blend of claim 1, wherein the natural oil combination further comprises 20% to about 45% by weight canola oil.
Claim 4 is drawn to the argan oil blend of claim 3, wherein the natural oil combination further comprises 3% to about 20% by weight castor oil.
Claim 13 is drawn to the argan oil blend of claim 11, wherein the natural oil combination comprises argan oil, canola oil, and one or more of sunflower oil, coconut oil, castor oil, black seed oil, and vitamin E.
Claim 14 is drawn to the argan oil blend of claim 11, wherein the natural oil combination comprises argan oil, sunflower oil, canola oil, and one or more of coconut oil, castor oil, black seed oil, and vitamin E.
Claim 15 is drawn to the argan oil blend of claim 11, wherein the natural oil combination comprises argan oil, sunflower oil, canola oil, and two or more of coconut oil, castor oil, black seed oil, and vitamin E.
The composition of Ma does not comprise canola oil and castor oil.
However, Petkoska et al. teach canola oil and castor oil as suitable oils for formulations for application to the skin (Par. [0124]). Petkoska et al. further teach that varying the amount of the oils in a formulation can change the absorbance behavior of the formulation, and thus the skin protecting capabilities of the formulation (Figs. 22-23; Pars. [0339-0340]), indicating that the concentration of oils in the formulation is a result effective variable.
And, as discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Ma to include canola oil and castor oil. Further, it would have been obvious to optimize the amounts of the canola and castor oils in the composition. It would have been obvious to do so to obtain a composition with the desired absorbance behavior to provide the desired light protection for the skin, with a reasonable expectation of success.
As such, claims 3-4 and 13-15 are also rejected as prima facie obvious.
Claims 6-7 are drawn to the argan oil blend of claim 1, wherein the essential oil combination comprises at least twelve oils selected from the group including thyme, basil, lavender, carrot seed, peppermint, rosemary, ginger, pomegranate peel, chamomile maroc, clove, turmeric, and garlic essential oils.
Claims 18-19 are drawn to the argan oil blend of claim 11, wherein the essential oil combination comprises at least twelve oils selected from the group including thyme, basil, lavender, carrot seed, peppermint, rosemary, ginger, pomegranate peel, chamomile maroc, clove, turmeric, and garlic essential oils.
The composition of Ma does not comprise basil, lavender, carrot seed, peppermint, ginger, pomegranate peel, turmeric, and garlic essential oils.
However, Ma further teaches in Table 1 (pgs. 6-31) the health benefits of various oils, including basil essential oil for treating acne; carrot seed essential oil for sun protection and antifungal activity; turmeric essential oil as an anti-inflammatory; garlic essential oil as an anti-inflammatory and to promote cardiovascular health; ginger essential oil to improve circulation; pomegranate peel essential oil as an anti-tumorigenic and anti-inflammatory; and peppermint essential oil as an antioxidant; further teaching lavender for hypertension and hair growth (Pars. [449] and [474]).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Ma to include basil, lavender, carrot seed, peppermint, ginger, pomegranate peel, turmeric, and garlic essential oils. It would have been obvious to combine the known composition with the known essential oils in order to obtain a composition with added health benefits, with a reasonable expectation of success.
As such, claims 6-7 and 18-19 are also rejected as prima facie obvious.
Claim 16 is drawn to the argan oil blend of claim 11, wherein the natural oil combination comprises argan oil, sunflower oil, canola oil, and three or more of coconut oil, castor oil, black seed oil, and vitamin E.
As set forth above, Ma teaches a composition wherein the natural oil combination comprises argan oil, sunflower oil, canola oil, coconut oil, and castor oil.
And as evidenced by Petkoska et al. at par. [0175], argan oil comprises vitamin E. Therefore, the composition of Ma necessarily comprises vitamin E.
As such, claim 16 is also rejected as prima facie obvious.
Claim 17 is drawn to the argan oil blend of claim 11, wherein the natural oil combination comprises argan oil, sunflower oil, canola oil, coconut oil, castor oil, black seed oil, and vitamin E.
Ma does not teach the composition comprising black seed oil.
However, Ma teaches in Table 1 black seed oil as being useful in the treatment of pain and having anti-inflammatory properties.
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Ma to include black seed oil. It would have been obvious to combine the known composition with the known use of black seed oil for treating pain to obtain the predictable result of a composition suitable for treating pain, with a reasonable expectation of success.
As such, claim 17 is also rejected as prima facie obvious.
Claim 20 is drawn to a composition containing the limitations of claims 1-4, 7, and 9, and is therefore rejected as prima facie obvious for the same reasons applied to claims 1-4, 7, and 9 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul Hoerner whose telephone number is (571)270-0259. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm eastern.
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, Bethany Barham can be reached at (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/PAUL HOERNER/Examiner, Art Unit 1611