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
Newly submitted claims 8-18 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claims 8-18 are directed to originally non-elected species (see the requirement for election/restriction filed 07/02/204 and the election on 07/08/2024.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-18 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
Firstly, on page 8 of 10, 1st full paragraph, Applicant asserts “the art of record does not disclose any of the claimed four-oil sets in the claimed relative proportions in a salt matrix intended to be added to water in a device reservoir.” The examiner agrees, but points out the rejections are obviousness rejections and not anticipation rejections. The present rejections are MADE OBVIOUS in view of the prior art rejection. Additionally, the test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art, and all teachings in the prior art must be considered to the extent that they are in analogous arts. Additionally, the “non-intuitive” ratio is rejected via an optimization rationale. Finally, the increase in electrical conductivity is more a function of the salt than the oils so this statement falls short of being persuasive.
Secondly, on page 8 of 10, 2nd full paragraph, Applicant asserts:
“the amended claim's functional limitation and use-context are not mere field-of-use recitations. The specification teaches that the Dead Sea salt-oil composition is formulated and dosed to enhance the electrical characteristics of water in the assembly reservoir at the point and manner of irradiation. The cited references do not identify a motivation to configure a multi oil Dead Sea salt composition to operate as a conductor in this specific assembly environment, nor do they recognize that the recited four-oil ratio is a result-effective variable for achieving the specific functional outcome in that context.”
The amendment to the preamble is most definitely a functional limitation (or intended use, or language directed to the manner in which an apparatus is intended to be employed). It should be noted a recitation of intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. However, if a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, i.e., a functional limitation, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963). Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such prior art reference, regardless of whether the prior art reference explicitly discusses such capacity for performing the recited function. In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971). In addition, where there is reason to believe that such functional limitation may be an inherent characteristic of the prior art reference, Applicant is required to prove that the subject matter shown in the prior art reference does not possess the characteristic relied upon. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Cir. 1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986); In re Ludtke, 441 F.2d at 664, 169 USPQ at 566 (CCPA 1971). A recitation with respect to the manner in which an apparatus is intended to be employed does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claim. In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974); In re Yanush, 477 F.2d 958, 177 USPQ 705 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 168 USPQ 530 (CCPA 1971); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967); In re Otto, 312 F.2d 937, 136 USPQ 458 (CCPA 1963); Ex parte Masham, 2 USPQ2d 1647 (BdPatApp & Inter 1987). Again claim 1 is directed to a composition of oils and a salt (Dead Sea salt).
Thirdly, on page 8 of 10, 3rd full paragraph, Applicant’s assertions are unpersuasive since they conclusory and no data has been provided (e.g., intrinsic evidence, declaration, etc.) to support these assertions.
Next, beginning on page 8 of 10, last 2 lines through page 9 of 10, lines 1-5, the noted declaration provides no support at all for overcoming the previous (and present rejection) as noted previously, see the Non-Final Rejection filed 06/10/2025, incorporated herein in its entirety.
Fourthly, on page 9 of 10, 2nd full paragraph, Applicant asserts “the amended claim clarifies that each of the botanicals is present as an essential oil and not, for example, as an extract, as further reflected in dependent claims.” Of the examined and searched claims only claim 3 has been amended to claim (among other things) “wherein each of the oil is an essential oil” and claims 1, 7, 19 and 20 are simply directed to combinations certain oils not essential oils. Due to the amended language of claim 3, the rejection of claim 3 has been updated and contains a new grounds of rejection (see the rejection of claim 3 below).
It should be noted claims 8-18 have been withdrawn by the examiner. New claims 19-20 have also been rejected in a manner similar to the rejection of original claims 4-6 in the non-final rejection filed 07/18/2024.
Applicant is invited to request an interview to discuss suggestions to find an acceptable conclusion of the prosecution for all parties.
Accordingly, this action is made FINAL.
Claim Rejections - 35 USC § 112
112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 20 recites the “method of claim 19, further comprising operating the laser ionization therapy assembly for a session addition of the composition to the reservoir.” The examiner has no idea what the “session addition” means and can therefore not determine the metes and bounds of the claimed invention as defined by claim 20.
112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The term “essentially” in claim 7 (line 1) is a relative term which renders the claim indefinite. The term “essentially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
In order to provide an examination and search the examiner interprets the word “essentially” as being deleted.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 3, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Hanzel et al. (WO 2017 /185016) in view of Altman et al. (WO 2020/247887) in view of Modak et al. (U.S. Patent 2019/0374573) in view of Hamilton et al. (U.S. Patent Application Publication 2009/0210036) in view of case law.
Regarding claim 1, and 7, Hanzel et al. disclose a composition used with a laser light
system and method for treating skin comprising:
using a composition comprising:
salt ("salt," see [00257] on page 99),
a combination of bergamot oil, lavender oil, and basil extract (see [00259] on page 100),
wherein the composition containing the salt and various oils exists in an ionized solution and is combined with laser (see [00173] and [00229]) light therapy (see [00257]), and wherein the laser light has a wavelength of 180 nm to 400 nm (see 1) 400 nm in [0010], [0018] and2) a light diode having a wavelength of 390 nm in [0029]-[0030],) and a peak power of 10 mW or less (see [0008] and [0070]).
Hanzel et al. fails to explicitly recite 1) the basil extract is basil oil, 2) tangerine oil, 3) the salt is a sea salt and the sea salt is a sea salt from the Dead Sea, 4) the ratio of bergamot oil to lavender oil to tangerine oil to basil oil is about 6:4:3:4, and 5) adding water and the composition of to a reservoir of the ionization therapy assembly; and directing the light inside the reservoir.
Like Hanzel et al., Altman et al. disclose the method of laser treatment of skin with a composition and teach combining lavender oil (page 130, line 21) with tangerine oil (page 130, line 18) in order to provide a known and workable composition combination in order to treat skin.
Like Hanzel et al., disclose Modak et al. disclose a composition of treating skin containing salt(s) and oils and teach combining lavender oil with basil oil (see [0049]) in order to provide a known and workable composition combination in order to treat skin.
Like Hanzel et al., Hamilton et al. disclose a composition salt and oil(s) and a laser treatment system and method for treating skin and teach providing the composition in a combination of lavender oil and bergamot oil ( see claims 1, 5, 8-10) and wherein the salt is Dead Sea salt (claim 7) in order to provide a known and workable composition in order to treat skin with the composition and laser light.
Hamilton et al. also teach adding water and the salt and oil composition (see [0028]-[0029] and figure 1) to the reservoir ("reservoir 230," see [0028]-[0029] and figure 1) and "the probe 320 may be arranged proximate exterior of the reservoir 230 such that light emitted from the probe 320 is transmitted through the reservoir 230 and water 112 and onto predetermined areas of the patient's body that are in contact with the water 112" (see 0031] and figure 1) in order to provide and known and workable manner of treating skin with compositions and laser light.
Therefore, at the time of the of invention it would have been obvious to one of ordinary skill in the art to modify the invention of Hanzel et al., as taught by Altman et al., to combine the lavender oil composition (having bergamot oil, lavender oil, and basil extract taught by Hanzel et al.) with tangerine oil in order to provide a known and workable composition combination in order to treat skin, as further taught by Modak et al., to combine the lavender oil composition (having bergamot oil, lavender oil, and basil extract taught by Hanzel. et al.) with basil oil in order to provide a known and workable composition combination in order to treat skin, and as further taught by Hamilton et al., to 1) combine the salt and oil composition (having salt, bergamot oil, lavender oil, and basil extract taught by Hanzel et al.) with Dead Sea salt in order to provide a known and workable composition in order to treat skin with the composition and laser light, and 2) to add water and the salt and oil composition to the reservoir and the probe arranged proximate exterior of the reservoir such that light emitted from the probe is transmitted through the reservoir and water and onto predetermined areas of the patient's body that are in contact with the water in order to provide treatment/therapy in known and workable manner of treating skin with oil combination compositions and laser light.
Regarding the silence of the prior art with respect to the recitation the ratio of bergamot oil to lavender oil to tangerine oil to basil oil is about 6:4:3:4, firstly the recited ratio is seen as prima facie obviousness. The prior art makes obvious explicitly the claimed combination of bergamot, lavender oil, tangerine oil and basil oil and Dead Sea salt which creates a rebuttable presumption of obvious since 1) there appears be no demonstrable criticality of the specific limitation of the 6:4:3:4 ratio, 2) there are no demonstrated unexpected results, and/or 3) appears to be optimization within the prior art or arrived at through routine experimentation. (see MPEP 716.02(d), 2144(111), and 2144.05 (11)-(Ill)(A) for example).
Finally, the case law rejection based on routine optimization is further strengthened given Applicant's admission of the record that Applicant engaged in optimization to arrive at the claimed ratio (see: 1) the Declaration filed under 37 C.F.R. 1.132 submitted on 05/28/2025, and 2) Applicant's traversal filed 05/28/2025).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hanzel et al. (WO 2017 /185016) in view of Altman et al. (WO 2020/247887) in view of Modak et al. (U.S. Patent 2019/0374573) in view of Hamilton et al. (U.S. Patent Application Publication 2009/0210036) in view of case law as applied to claim 1 above, and further in view of 1) Altman et al. (WO 2020/247887) , 2) Modak et al. (U.S. Patent 2019/0374573), and/or 3) Hamilton et al. (U.S. Patent Application Publication 2009/0210036).
Regarding claim 3, Hanzel et al. fails to disclose that each oil of the combination is an essential oil.
However, Altman et al., Modak et al., and Hamilton et al. all disclose the use of essential oils in order to treat skin/tissue.
Therefore, at the time of the of invention it would have been obvious to one of ordinary skill in the art to modify the invention of Hanzel et al. in view of Altman et al. in view of Modak et al. in view of Hamilton et al. in view of case law, as taught by Altman et al., Modak et al., and/or Hamilton et al., to use essential oils as a known, workable and concrete example for treating skin/tissue as opposed to just oils or extracts.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm.
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, Niketa Patel can be reached at (571) 272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON F ROANE/Primary Examiner, Art Unit 3792