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 Status
Claims 1-6, 12-19, 23-24, and 32-35 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restriction
Applicant’s election with traverse of Group I (claims 1-6 and 12-18) in the reply filed 7/16/2026 is acknowledged. Applicant’s species election with traverse of i) linalool (terpene compound) ii) sodium methyl cocoyl taurate and cocamidopropyl betaine (anionic and amphoteric emulsifier), iii) phenoxyethanol, caprylyl glycol, and sorbic acid (preservative) and iv) peppermint oil (essential oil) in the reply filed 7/7/2026 is acknowledged.
The traversal is on the grounds that the subject matter of Groups I and II have unity of invention. Applicant argues that the presently claimed method of Group I is tied to the presently claimed composition of Group II via the ingredients of the composition. Applicant argues that the composition ingredients are responsible for a novel mechanism of the claimed method, and therefore makes a contribution over the prior art.
This is not found persuasive because Applicant has not shown that the groups of inventions have a general inventive concept under PCT rule 13.1. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features, meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. As set forth in the restriction mailed 4/7/2026, Applicant’s special technical feature recited in claim 19 is an oil-in-water emulsion capable of treating pediculosis by suffocation of lice, wherein the emulsion comprises an oil blend and an effective amount of a surfactant blend, wherein the surfactant blend comprises an anionic emulsifier and an amphoteric emulsifier. However, Chazot teaches a composition comprising an oil-in-water emulsion in combination with a surfactant blend comprising an anionic and amphoteric emulsifier (par. [0137] and [0226]). Hence, there is no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19, 23-24, and 32-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected composition, there being no allowable generic or linking claim.
Claims 1-6 and 12-18 are under consideration to the extent of the elected species, e.g. the terpene compound is linalool, the anionic emulsifier is sodium methyl cocoyl taurate, the amphoteric emulsifier is cocamidopropyl betaine, the preservative system is phenoxyethanol, caprylyl glycol, and sorbic acid, and the essential oil is peppermint oil.
Claim Rejections - 35 USC § 112
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 4-6 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 4-5 are indefinite in referring to “wt. %” as it is unclear if the weight percentage is of the overall composition, or of the surfactant blend. One skilled in the art would not be able to distinguish if the anionic emulsifier, for example, is 3 to 10 wt. % of the surfactant blend, or 3 to 10 wt. % of the entire composition, or if some other meaning was intended. In the interest of compact prosecution, claims 4-5 are being interpreted that the ingredients are wt. % of the entire composition.
Claim 6 is indefinite as it is unclear what is meant by “35 to 50 wt. % of the surfactant blend.” It is believed by the Examiner that what is meant is the surfactant blend makes up 35 to 50 wt. % of the overall composition. As written, the metes and bounds of the claim cannot ascertained by one skilled in the art. In the interest of compact prosecution, claim 6 is being interpreted wherein the oil-in water emulsion comprises 35 to 50 wt. % of the surfactant blend.
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.
Claims 1, 4-6, 12, and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Chazot (US20110118196A1, published 5/19/1022, cited in IDS filed 3/28/2024) in view of James-Meyer et al. (US20140018434A1, published 1/16/2014).
Chazot teaches a liquid composition for eradication of ectoparasites, such as head lice, and methods of using the same, including a method of using said composition by applying it to an affected area (par. [0059] and claim 25). Chazot teaches that the composition is an oil-in-water emulsion (par. [0137]) comprising 1-20 wt% of an oil, water, 5 -50 wt% of a film-forming carbohydrate, and surfactants or emulsifiers, used interchangeably by Chazot (par. [0135]). Chazot teaches that the oil may be selected from a group of various oils, including peppermint oil (cf. claims 16-18) (par. [0028]). Chazot teaches that the surfactant/emulsifier may be selected from the group including anionic and amphoteric surfactants (par. [0226]). Chazot teaches that the surfactant blend may comprise from about 0.05 wt. % to about 50 wt. % of the total weight of the formulation (cf. claim 6) (par. [0227]). Alongside the surfactant blend, water is present in the composition in an amount from 40 to 80 wt. %, based on the fact that the composition is, according to one aspect of embodiments, comprised of two components: a liquid ovicidal/pediculicidal, and water. Component 1, the liquid ovicidal/pediculicidal, is present in an amount of about 20 to about 60 wt. %. Component 2 must obviously make up the rest to 100 wt. %. Therefore, water can be said to be present in about 40 to about 80 wt. %. (par. [0014]) Chazot teaches that this kind of composition is free of toxic elements (par. [0127]). Further, the method of eradication as taught by Chazot is suffocation (par. [0064]).
However, Chazot does not teach the inclusion of sodium methyl cocoyl taurate or cocamidopropyl betaine in particular.
This deficiency is made up for by the teachings of James-Meyer.
James-Meyer teaches an aqueous composition effective in killing, removing, and/or repelling a range of insects while being non-toxic to humans, animal, and the environment (par. [0006]). One application specifically mentioned by James-Meyer is the killing, removing, and/or repelling of head lice, as well as killing and/or removing head lice nits from hair, and this application may be achieved by including the composition in a shampoo (par. [0007-0008] and [0010]). James-Meyer teaches the inclusion of surfactants selected from the group including sodium methyl cocoyl taurate and cocamidopropyl betaine (par. [0119]). James-Meyer also teaches the overall amount of water in the composition in conjunction with the two surfactants, disclosing that it may be present in between 10-60 wt. % when the surfactants are selected from the group including sodium methyl cocoyl taurate and cocamidopropyl betaine (claim 3 and claim 10).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to produce a method of eradicating or suffocating ectoparasites, including head lice comprising applying to the hair (i.e., an affected area) an oil-in-water emulsion comprising 5-50 wt% of a film-forming carbohydrate and 1-20 wt% of an oil, including peppermint oil, and water, wherein the emulsion includes additional ingredients, preferably surfactants, including anionic and amphoteric surfactants in an amount from about 0.05-50 wt% according to Chazot and wherein the surfactants are sodium methyl cocoyl taurate and cocamidopropyl betaine as taught by James-Meyer. One of ordinary skill in the art would have been motivated to use the surfactants sodium methyl cocoyl taurate and cocamidopropyl betaine as taught by James-Meyer in the method of Chazot because Chazot teaches surfactants are a preferred ingredient and the combination of sodium methyl cocoyl taurate and cocamidopropyl betaine were known to be used in shampoo compositions for killing, removing, and/or repelling of head lice as taught by James-Meyer. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). As both Chazot and James-Meyer relate to the art of lice killing/removal and both can be applied as a shampoo for an affected area to eradicate insects such as lice, one would have a reasonable expectation of success to apply the specific surfactants sodium methyl cocoyl taurate and cocamidopropyl betaine as taught by James-Meyer in the emulsion of Chazot because surfactants are preferred according to Chazot.
With respect to claims 4-6, the Examiner notes that the cited references do not expressly disclose compositions with relative mass loadings that are exactly congruent with the claimed mass ranges. However, it is the Examiner’s position that the cited art teaches a range of loadings of surfactants and water that significantly overlap with the claimed ranges and, as such, would render the claimed invention obvious. See MPEP § 2144.05. “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).”
With respect to claim 12, the Examiner notes that the cited references do not expressly disclose compositions being free of pesticides. However, it is the Examiner’s position that the teaching of Chazot as being “non-toxic and benign” (par. [0063]), as well as the lack of any inclusion of pesticide, renders claim 12 as analogous to the composition as taught by Chazot. See AC Technologies S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019) (“[A] reference need not state a feature’s absence in order to disclose a negative limitation.”).
With respect to claim 18, and the recitation of increased activity of the lice, 1-20 wt% of peppermint oil in the emulsion of Chazot and James-Meyer would necessarily increase activity of lice as it will have the property of doing so since it is identical "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
As Chazot discloses the inclusion of surfactants, and a specific amount of water, and James-Meyer specifies ideal surfactants for use in a composition for treating lice infestation, it would have been obvious to include the two in the specified amount alongside water in the amounts described supra. The resultant method would suffocate lice as taught by Chazot, comprising use of a composition on an infected area as taught by Chazot and James-Meyer.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Chazot (US20110118196A1, published 5/19/1022, cited in IDS filed 3/28/2024) and James-Meyer et al. (US20140018434A1, published 1/16/2014) as applied to claims 1, 4-6, 12, and 16-18 above, and further in view of Franklin (US5977186A, published 11/2/1999).
Chazot and James-Meyer have been described supra.
However, neither Chazot nor James-Meyer teach the inclusion of linalool.
This deficiency is made up for by the teachings of Franklin.
Franklin teaches treatments for pediculosis which comprise formulations of one or more terpenes in aqueous solutions (abstract). This treatment is most preferred in the form of a shampoo (col. 6 line 26). Franklin teaches that linalool is included in a group of optimal terpenes, and includes linalool in a most preferred embodiment (col. 7 and 8). Franklin discloses that linalool is an effective pediculicide (col. 7 line 37).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to include linalool as taught by Franklin into the composition of Chazot and James-Meyer and use the composition in a method of eradicating or suffocating ectoparasites, including head lice comprising applying by to the hair (i.e., an affected area) an oil-in-water emulsion comprising 5 -50 wt% of a film-forming carbohydrate and 1-20 wt% of an oil, including peppermint oil, and water, wherein the emulsion includes additional ingredients, preferably surfactants, including anionic and amphoteric surfactants in an amount from about 0.05-50 wt% according to Chazot and wherein the surfactants are sodium methyl cocoyl taurate and cocamidopropyl betaine as taught by James-Meyer. The resultant composition would comprise the ovicidal/pediculicidal carbohydrate, the surfactants, oil, and water, which can be used as described by Chazot to suffocate lice. As Franklin teaches a treatment for pediculosis, it would have been obvious to apply teachings of the herbal extract linalool to the method and composition of Chazot and James-Meyer for pediculosis. As Franklin teaches that linalool acts as a pediculicide, there is benefit to including it in the composition. One would be motivated to do so as the inclusion of linalool as a pediculicide would improve the overall pediculicidal property of the composition, which would further benefit the composition. One would have reasonable expectation of success as the overall purpose of the compositions is the same, and further, Franklin teaches a pediculicidal shampoo which is what Chazot and James-Meyer teach. The resulting composition would be an emulsion comprising the two surfactants described supra with some amount of linalool as an active as well as for pediculicidal benefit as taught by Franklin. This composition would be used in a method of treatment as described by Chazot, wherein the method comprises applying said composition to an infected area to suffocate lice. Therefore, claims 2-3 are rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over over Chazot (US20110118196A1, published 5/19/1022, cited in IDS filed 3/28/2024) and James-Meyer et al. (US20140018434A1, published 1/16/2014) as applied to claim 1, 4-6, 12, and 16-18 above, and further in view of King (US20200330364A1, published 10/22/2020, priority to 11/13/2017).
Advisory note: King (US20200330364A1) is being applied as prior art under 35 U.S.C. 102(a)(1) as of its publication date of 10/22/2020 as well as under 35 U.S.C. 102(a)(2) as of its earliest effective filing date of 11/13/2017.
Chazot and James-Meyer have been described supra.
However, neither Chazot nor James-Meyer teach the inclusion of a paraben-free preservative system comprised of phenoxyethanol, caprylyl glycol, and sorbic acid.
This deficiency is made up for by the teachings of King.
King teaches a composition generally relating to insect repellent (abstract). King further elaborates that the composition may be used as a shampoo or conditioner (par. [0006]). King teaches that the composition may comprise a preservative, wherein the preservative comprises phenoxyethanol, caprylyl glycol, sorbic acid, or any combination thereof (par. [0010]). This preservative may be present in an amount of about 0.01% to 5% by weight (cf. claim 13-15).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the instant application to apply the preservative system of King to the composition of Chazot and James-Meyer and develop a method of eradicating or suffocating ectoparasites, including head lice comprising applying to the hair (i.e., an affected area) an oil-in-water emulsion comprising 5 -50 wt% of a film-forming carbohydrate and 1-20 wt% of an oil , including peppermint oil, and water, wherein the emulsion includes additional ingredients, preferably surfactants, including anionic and amphoteric surfactants in an amount from about 0.05-50 wt% according to Chazot and wherein the surfactants are sodium methyl cocoyl taurate and cocamidopropyl betaine as taught by James-Meyer. One would be motivated to modify the composition with the teachings of King as a preservative would maintain the overall quality and effectiveness of the composition, maintaining the integrity of the product. The preservative system as taught by King (i.e. phenoxyethanol, caprylyl glycol, and sorbic acid) would benefit the composition as a whole. As Chazot, James-Meyer and King all relate to shampoos or hair treatment, and further, treatments targeting insects, one would have a reasonable expectation of success when including the preservative system as taught by King in the composition as taught by Chazot and James-Meyer and applying the composition to an infested area. This would result in a composition comprising a carbohydrate, an oil-in-water emulsion wherein the oil is peppermint oil, a surfactant blend of sodium methyl cocoyl taurate and cocamidopropyl betaine, and a preservative system or phenoxyethanol, caprylyl glycol, and sorbic acid in the amounts described supra. This composition would be used in a method for treating pediculosis as described by Chazot to suffocate lice, wherein the method comprises using said composition. Therefore, claims 13-15 are rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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