DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/08/2024 has been considered by the examiner.
Status of the Claims
The response filed 07/13/2026 is acknowledged.
Claims 1-19 are pending.
Applicant's election with traverse of Group I, claims 1-17 in the reply filed on 07/13/2026 is acknowledged. The traversal is on the ground(s) that the office alleges without any explanation as required by MPEP 808.02, that there would be a serious search and/or examination burden invention. This is not found persuasive because, as acknowledged in the response, the office explained the inventions require a different field of search, e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries. A different field of search, e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries is the explanation for the serious search and/or examination burden as required by MPEP 808.02.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/13/20226.
Claims 1-17 are treated on the merits in this action.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. Rejections not reiterated herein have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
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.
Claim 9 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
There is a lack of antecedent basis for in which the dispersed fatty phase comprises at least one lipophilic cationic compound comprising at least one primary, secondary, tertiary or quaternary amine function and/or the continuous aqueous phase comprises at least one non-ionic surfactant in claim 9. Applicant may consider using the transitional phrase “further comprises” rather than comprises for each phrase.
Clarification is required.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
There is a lack of antecedent basis for the lipophilic cationic compound comprising at least one primary, secondary, tertiary or quaternary amine function in claim 10 since claim 1 does not establish a lipophilic cationic compound comprising at least one primary, secondary, tertiary or quaternary amine function. Applicant may consider using the transitional phrase “further comprises” rather than comprises.
Clarification is required.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
There is a lack of antecedent basis for lipophilic cationic compound(s) comprising at least one primary, secondary, tertiary or quaternary amine function in claim 11 since claim 1 does not establish a lipophilic cationic compound comprising at least one primary, secondary, tertiary or quaternary amine function. Applicant may consider using the transitional phrase “further comprises” rather than comprises.
Clarification is required.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
There is a lack of antecedent basis for non-ionic surfactant(s) in claim 12 since claim 1 does not establish a non-ionic surfactant(s). Applicant may consider using the transitional phrase “further comprises” rather than comprises.
Clarification is required.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 15 includes the limitation in which the composition comprises from 1% to 30% by weight of oil(s) relative to the total weight of the dispersed fatty phase. There is a lack of antecedent basis for oil(s). Further, perfumes are oils (Widemann, e.g., 0273). Therefore, it is not clear if the perfume of claim 1 is included in this calculation or if Applicant intended the limitation to refer to additional non-perfume oils. Applicant may consider amending claim 15 to say: in which the composition further comprises from 1% to 30% by weight non-perfume oils relative to the total weight of the dispersed fatty phase.
Clarification is required.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
There is a lack of antecedent basis for alcohol(s) in claim 17 since claim 1 does not establish alcohol(s). Applicant may consider using the transitional phrase “further comprises” rather than comprises.
Clarification is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-14, and 16-17 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Widemann, WO 2020234196 A1 as evidenced by vivapur mcg, JRS Pharma, 2026.
Widemann teaches compositions in the form of an oil- in-water emulsion comprising a continuous aqueous phase and a dispersed fatty phase, wherein the continuous aqueous phase comprises microcrystalline cellulose and cellulose gum (Widemann, e.g., 0240-0259, e.g., Table 4), and the dispersed phase comprises a perfume (Widemann, e.g., table 4, fragrance) in an amount of 5%. Widemann teaches a composition in the form of an oil-in-water emulsion comprising at least one fatty phase in the form of drops dispersed in a continuous aqueous phase, the fatty phase and the aqueous phase being immiscible with one another at room temperature and atmospheric pressure characterized as in claim 1.
Applicable to claims 2-4: The composition of Widemann, having all characteristics required by claim 1, is presumed to have the properties of claims 2-4. See MPEP 2112.01.
Applicable to claim 5: the composition has about 0.9% microcrystalline cellulose (Widemann, e.g., table 4). Vivapur MCG is about 85% MCC (MCC 82-89%, see vivapur mcg, JRS Pharma, 2026) and the composition contains 1% Vivapur MCG, and the aqueous phase is about 92.7% of the total weight of the composition (0.85/92.7 x 100% = 0.9%).
Applicable to claims 6-8: The composition has a cellulose gum (Wiedmann, e.g., Table 4 and 0262) which is present in an amount of about 0.16%. Vivapur MCG is about 15% cellulose gum (11.3-18.3% Na-CMC (vivapur mcg, JRS Pharma, 2026), and the composition contains 1% Vivapur MCG, and the aqueous phase is about 92.7% of the total weight of the composition (0.15/92.7 x 100% = 0.16%).
Applicable to claims 9 and 12: The composition has at least one non-ionic surfactant, e.g., PEG-40 hydrogenated castor oil and trideceth 9 in an amount of 0.5% (Widemann, e.g., table 4).
Applicable to claims 10-11: Widemann teaches alternative compositions comprising cationic surfactants (lipophilic cationic compound) in an amount of 0.5% (Widemann, e.g., Table 4 and 0255).
Applicable to claims 13 and 16: the fatty phase comprises what appears to be about 100% perfume oil or about 79 % if including solubilizer, symdiol and symsave (Widemann, e.g., table 4). Both values are within the claimed range.
Applicable to claims 14 and 16: the fatty phase comprises 5% perfume oil relative to the total weight of the composition and the fatty phase is 79% or 100% perfume oil (Widemann, e.g., table 4).
Applicable to claim 17: the composition appears to contain less than 10% alcohol relative to the total weight of the composition.
Wiedmann anticipates the subject matter of instant claims 1-9, 12-14, and 16-17.
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 of this title, 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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Widemann, WO 2020234196 A1 as evidenced by vivapur mcg, JRS Pharma, 2026.
The teachings of Widemann enumerated above regarding the anticipation of claims 1-14, and 16-17 apply here. Claims 1-14, and 16-17 are therefore also obvious over Widemann as evidenced by vivapur mcg, JRS Pharma, 2026.
Applicable to claim 15: Widemann does not expressly teach the exemplified composition comprising from 1% to 30% by weight of oils relative to the total weight of the dispersed phase when the composition comprises microcrystalline cellulose and a perfume in an amount of at least 5% by weight. However, Widemann teaches the emulsions may be formulated with oils (Wiedmann, e.g., 0061), and Widemann exemplifies that emulsions may be formulated with, e.g., 2.5% of an oil or 5wt% of a combination of oils, e.g., isopropyl myristate and vegetable oil triglycerides (Widemann, e.g., 0236, Table 2). Based on Widemann, Table 2, the skilled artisan would have understood the emulsion may be formulated with a suitable amount of oil, e.g., 5wt% oil. Applying this teaching to exemplified compositions (Widemann, e.g., 0240-0259, e.g., Table 4), and the fact that the emulsion may contain 0.1 to 75wt% oily phase (Widemann, e.g., claims 3 and 9), e.g., 1-50%, 2-20%, 3-10% (Widemann, e.g., 0063), it is clear the claimed range recited in claim 15 is within the range suggested by Widemann. Widemann suggests the amount of oil may be optimized relative to the hydrophobic active agent as desired including the case where there is minimal amounts of oily inner phase relative to the hydrophobic active perfume (Wiedemann, e.g., 0068-0069). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to modify oil in water emulsions taught by Widemann by formulating the oil in water emulsion with an amount of oil ranging from about 1-50%, or 2-20%, or 3-10% with a reasonable expectation of success. This would have led the skilled artisan to an amount of oil within the range claimed by weight of the dispersed oil phase with the balance being active agent, e.g., perfume. The skilled artisan would have had a reasonable expectation of success since Widemann teaches the amount of oil may vary over a broad range to stably formulate a perfume.
Accordingly, the subject matter of claims 1-17 would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, absent evidence to the contrary.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM A CRAIGO whose telephone number is (571)270-1347. The examiner can normally be reached on Monday - Friday, 9am - 6pm, PDT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A WAX can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM CRAIGO/Examiner, Art Unit 1615
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