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 .
Claims 1-32 have been presented for examination on the merits.
Election/Restrictions
Claims 25-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/18/26.
Accordingly, claims 1-24 are elected and being examined on the merits.
Objection to Specification
The Specification recites the trademark Polysorbate without proper indication.
When a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirement of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe. See MPEP § 608.01(v).
Although the use of trademarks having definite meanings is permissible in patent applications, the proprietary nature of the marks should be respected. Trademarks should be identified by capitalizing each letter of the mark (in the case of word or letter marks) or otherwise indicating the description of the mark (in the case of marks in the form of a symbol or device or other nontextual form). Every effort should be made to prevent their use in any manner which might adversely affect their validity as trademarks.
Claim Objections
Claims 8, 14, 20, 24 are objected to because of the following informalities:
Claim 8 is objected to because “eucalyptus” is the only species that is italicized. A uniform listing should be adopted for consistency.
Claims 14 and 24 use the tradename PolysorbateTM without identifying it properly.
Claim 20 contains two commas after ceder oil (See line 3). Appropriate correction is required.
Claim 20 contains a Markush listing of essential oils. Some species are listed with the term “oil” and some without it. Additionally, “eucalyptus” and “galbanum” are the only species that are italicized. A uniform listing should be adopted for consistency.
In claim 20 the compound “Sichuan pepper” has been capitalized.
Claim Rejections - 35 USC § 112
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.
Claims 1-24 are 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. Independent claims 1 and 15 include the class of compounds “amphiphilic terpene based polyethers” as the olfactory compound fixative or essential oil fixative. However, the Specification does not provide any definition or explanation as to what is meant by the term “based”. It is not clear what compounds belong to this class of compounds as it is not defined in what way the said polyethers are based on terpenes.
Remaining claims are also rejected for containing the same issue.
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.
Claims 1-24 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-24 are indefinite for including various concentration ranges by percentages without indicating if the said concentrations are weight percent or volume percent and if they are based on the total weight or volume of the personal care composition, part of it or something else.
Claims 1, 5, 8, 11-16, 18, 20, 22-24 are further indefinite for including concentration ranges by percentages including without indicating the upper limit of the range. The said recitations such as “at least 1% of polyol’ or “at least 20% of an emollient”, encompasses 100%, which is neither disclosed in the Specification nor possible.
Claim 16, and the Specification recite species “sorbet 20” and “sorbet 6”. These species/compounds don’t appear to be known compounds. The prior art discloses “Polysorbate 20TM” or “Tween 20 TM”.
Claim 20 is indefinite for reciting “wintergreen oil” and also “methyl salicylate” which are known to be the same oil, and “black pepper” and “oil of black pepper” which are the same oil.
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.
Applicants claims
Claim 1 is directed to a personal care vapor composition, comprising:
at least about 1 percent of a polyol component selected from one or more C3-C6 polyols;
at least about 20 percent of an emollient selected from one or more triglycerides of C6-C18 fatty acids, isopropyl isostearate and mixtures thereof; from about 0.5 to about 10 percent of an olfactory component comprising one or more essential oils; an olfactory component fixative selected from the group consisting of amphiphilic terpene-based polyethers, Commiphora myrhha extract, methyl hydrogenated rosinate and mixtures thereof, the olfactory component fixative being present in the personal care vapor composition at a ratio of 1:1 to 1:4 relative to the olfactory component; and water, wherein the personal care vapor composition has an aqueous phase and an oil phase, wherein the aqueous phase includes the water and the polyol component, wherein the oil phase includes the emollient and the olfactory component, and wherein the oil phase is at least 30 percent of the personal care vapor composition.
Claims 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over Cahen (US 20060002876) in view of Bingham et al (US 20200188293) and as evidenced by Prospector® Ultrus.
Cahen teach a personal care compositions comprising a carrier and a mixture of essential oil components having specific levels of eucalyptol, terpene materials and auxiliary fragrance materials. The compositions herein gentle to skin and have a fragrance and activity similar if the composition were made using the pure extracted essential oil (See abstract).
Regarding claims 1 and 15, in part, Cahen teach Such carriers must also be suitable for application to the skin, and include water, C2 to C6 monohydric alcohols, petrolatum, fluid silicone materials such as dimethicones, or mixtures thereof. Preferred carriers herein include water, petrolatum, or mixtures thereof. Preferably, the compositions comprise from about 1% to about 99.9799% carrier (See [ 0031]).
Further regarding claims 1, 5, 15 and 18, Cahen teach that the said personal care compositions comprise emollient materials including ester emollient materials such as methyl isostearate, isopropyl isostearate, isostearyl neopentanoate, isopropyl myristate, etc, and mixtures thereof. Suitable ester emollient materials. The emollient material is preferably present in the compositions at a level of from about 0.1% to about 10% (See [0038]-[0041]).
Further regarding claims 1 and 15, Cahen teach that the said personal care compositions comprise base fragrance material including a terpene material including essential oils such as eucalyptus, rosemary and lavender. The terpene material is present at from 0.1 to about 10% by weight of the composition (See [0026]).
Further regarding claims 1 and 15, Cahen teach that the said personal care compositions preferably comprise from about 0.0001% to about 0.005% auxiliary fragrance materials, in ratios that enable the materials to act synergistically to provide fragrance and active benefits, whilst not generating a sensitivity-type response. Without being limited by theory, it is believed that both the auxiliary fragrance materials and terpene materials are essential to elicit the consumer response to essential oils. Preferably the ratio of terpene material to auxiliary fragrance material is from about 1:1 or about 1:10. Said auxiliary fragrance material include citral, eugenol, hydroxy-citronellal, citronellol, farnesol, etc, (See [0007], [0018] and [0030]).
Regarding claims 1, 5, 13, 15, 18 and 23, Cahen further teach that the said personal care compositions are preferably in the form of an emulsion, such as a water-in-oil or oil-in-water emulsion. The oil phase may contain different materials, or different combinations of materials, or may contain multiple oil phases. The total level of oil phase components in the compositions is typically from about 0.1% to about 60%, preferably from about 1% to about 30%. The oil phase preferably comprises oily components such as vegetable oils, fats, fatty acid esters, fatty alcohols, fatty acids and mixtures thereof, preferably, fatty alcohols such as behenyl alcohol, cetyl alcohol and stearyl alcohol and hydrocarbons such as mineral oils (See [0057]-[0058]).
Regarding claims 14 and 24, Cahen teach that the said compositions may comprise an emulsifier and/or surfactant. The said compositions preferably comprise from about 0.05% to about 20% of a surfactant or mixture of surfactants. Suitable surfactants include glycosides, cetearyl alcohols, alkoxylated derivatives of C1-C30 fatty acid esters of C1-C30 fatty alcohols, alkoxylated ethers of C1-C30 fatty alcohols, poly-glyceryl esters of C1-C30 fatty acids, C1-C30 esters of polyols, C1-C30 ethers of polyols, alkyl phosphates, polyoxyalkylene fatty ether phosphates, fatty acid amides, acyl lactylates, and mixtures thereof. Other nonionic surfactants useful herein are fatty acid ester blends based on a mixture of sorbitan or sorbitol fatty acid ester and sucrose fatty acid ester, phosphate, or phosphonate, etc, (See [0043]-[0047]).
Cahen’s personal care composition differs from that of the instant claims in that some components or some concentration ranges of some components are not taught or are different. These would have been obvious to one of ordinary skill in the art in view of the disclosure, teachings of the prior art such as Bingham et al or knowledge of the ordinary skill in the art.
Bingham et al teach a personal care composition that can exhibit an increased vapor release while maintaining physical stability and texture. The personal care composition can contain from about 35% to about 90% petrolatum, from about 20% to about 50% of an olfactory composition, and a gelling agent mixture. The gelling agent mixture can contain dibutyl lauroyl glutamide, dibutyl ethylhexanoyl glutamide, and a solvent selected from the group consisting of pentylene glycol, propylene glycol, hexylene glycol, 3-methyl-1,3-butanediol, 3-methyl-1,2-butanediol, 1,5-pentanediol, and combinations thereof. The personal care composition can exhibit a vapor release of from about 35 mg to about 300 mg at 8 hours and can have an Instability Index of less than about 0.8 (See abstract).
Regarding claims 1-4, 8, 15-17 and 20, in part, Bingham et al teach a personal care composition comprising from about 35% to about 90% petrolatum, greater than about 50%, or from about 65% to about 70%, all by weight of the composition (See [0023]), and a solvent selected from the group consisting of pentylene glycol, propylene glycol, hexylene glycol, 3-methyl-1,3-butanediol, etc, and combinations thereof; present in the composition at from about 0.5% to about 10% by weight (See [0008], claims 5, 7, 12 and 15).
The said personal care composition is an olfactory composition comprising one or more olfactory agents, including cedar leaf oil, menthol, eucalyptus oil, cedar wood oil, turpentine, thymol, anethole, coriander, mandarin, petitgrain, armoise, cumin nitrile, marjoram sweet, pink pepper, basil, frankincense, methyl salicylate, rosemary oil, bergamot, galbanum, neroli, sichuan pepper, black pepper, grapefruit, nutmeg oil, tea tree oil, cardamom, jasmine, verveine, chinese ginger oil, lavender oil, orange sweet, vetivert, cinnamon leaf, lavendine, palmarosa, violet leaves, clary sage, lemongrass, patchouli oil, ylang, clove, lime, peppermint oil, olbus oil, and combinations thereof (See [0059]-[0061]). The olfactory compound is present from about 10% to about 50% by weight of the composition (See [0062]). The said personal care composition may further comprise additional fragrance materials including geranium oil, lemon oil, spearmint oil, myrtle oil, oregano oil, terpineol, verbenone, citronella acid, curcumin, etc, or mixtures thereof. These materials may be used at levels and ratios known to those skilled in the art of mixing fragrance materials for personal care compositions, whilst maintaining the levels of base scent coming from the said material (See [0071]).
Regarding claim 13, Bingham et al, solvents including glycols such as pentylene glycol, propylene glycol, glycerol, glycerol esters, and combinations thereof (See [0036]).
Evidenced by:
Prospector® Ultrus disclose that Citropol® F is a polycitronellol compound used in formulation as a sustainable fragrance enhancer that provides a bold and immediate impression while ensuing a controlled release of volatile ingredients for a longer lasting scent, even in low concentrations as 1%.
It would have been prima facie obvious to a person of ordinary skilled in the art at the time the invention was made to have combined the teachings of Bingham et al with Cahen to arrive at the instant invention with a reasonable expectation of success. It would have been obvious to do so because both references teach a personal care composition comprising carrier materials, essential oils, essential oil fixatives and other suitable components such as emulsifiers. While Cahen teach two phase compositions comprising an oil phase and a water phase wherein the carrier can be water, petrolatum or a combination of both, essential oils, essential oil fixatives (auxiliary fragrances such as citronellol), emulsifiers, etc, Bingham et al teach a personal care composition with increased vapor release that comprises petrolatum, solvents, essential oils, gelling agents, etc. Cahen for example, discloses a composition that comprises a carrier that can be a combination of water and petrolatum at up to 95% of the composition, and an additional emollient compound at about 10%. Bingham et al teach that the composition may be from 35 to 90% petrolatum. Thus, one of ordinary skill in the art is more than capable of determining the suitable and type of emollient for the desired personal care composition base don the disclosures of the references. Similarly, the concentration of the remaining components, can be from the teachings of modified based on desire.
Additionally, as evidenced by Prospector® Ultrus, it is well known in the art and would have been obvious to one of ordinary skill in the art to have included polycitronellol in the compositions to enhance the vapor release and to provide a longer lasting scent of the essential oil.
The claims would have been obvious because a person of ordinary skill has good reasons to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
In other words, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claims 1-24 are rejected. Claims 25-32 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mina Haghighatian whose telephone number is (571)272-0615. The examiner can normally be reached M-F, 7-5 EST.
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/Mina Haghighatian/
Mina Haghighatian
Primary Examiner
Art Unit 1616
Prosecution Insights