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 1-20 are pending.
Claims 18-20 are withdrawn.
Claims 1-17 are examined on the merits herein.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 30-Apr-2025 and 11-May-2026 has been considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on 18-Jun-2027 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
Page 45, GC column dimensions should be 30 m x 0.32 mm ID x 4.0 µm.
Appropriate correction is required.
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.
Claim 1 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. The term “preferably within” is non-limiting and does not clearly establish whether the subsequent limitations of ɑ, ß-unsaturated carbonyl comprises an aldehyde, ketone, a cyclic ketone, or a combination thereof are a part of the claimed invention or to express a preference.
Claim 6 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. The term “about” in the context of a mean peak area of DMDS does not provide a standard to determine the scope of the term “about 10” since the claim nor the specification does not specify the degree of variability encompassed.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ramji et al. (US8007771B2, Patent: 30-Aug-2011, Filed: 05-Jul-2007), and further in view of Baig et al. (US11690792B2, Filed: 30-Sep-2020).
In regards to Claim 1-4, Ramji teaches an oral care composition comprising stannous fluoride at 0.454 wt% and a Michael acceptor in the form of flavor at 0.950 wt% (Example IIIA, Col 19). The flavor of Example IIIA was taught in Example I comprising 5 wt% cinnamaldehyde, corn mint, anethole, menthol, and peppermint (Example I, Col 18). Further, Ramji teaches that mint oil contains DMSO that react with stannous ions to form dimethyl sulfide (DMS) (Col 4, line 19-26) and the flavor oil comprises compounds such as dimethyl sulfoxide (DMSO), dimethyl sulfide (DMS), dimethyl disulfide and dimethyl sulfone. The composition of Example IIIA is free of carvone.
In regards to Claim 5, Example IIIA comprises of 0.950 wt% of flavor, and the flavor component further comprises of 5 wt% of cinnamaldehyde. 0.950 wt% x 5 wt% = 0.0475 wt% of the total composition is the Michael acceptor (Example 1, Col 18 and Example IIIA, Col 19).
In regards to Claim 6-7, Ramji teaches a headspace SPME fiber GC-SCD method for the same composition system as Example IIIA. The peak areas of methyl mercaptan and dimethyl sulfide were normalized to the control, and the addition of protectant resulted in substantial reduction in the measurement of methyl mercaptan and dimethyl sulfide (Col 6, line 1-10). The peak area of claim 6 is inherent to setting up the headspace GC and analysis of the analyte.
In regards to Claim 8-9, Ramji teaches that the precursor species of dimethyl sulfoxide, dimethyl sulfide, dimethyl disulfide, and dimethyl sulfone having levels as high as 300 ppm (Col 3, line 46-52). Ramji further discloses the concentration of the cinnamaldehyde is 2700 ppm, resulting in a ratio of 300 ppm: 2700 ppm or 1:9 (Col 6, line 52).
In regards to Claim 10-11, Ramji teaches that phytate includes phytic acid (Col 16, line 31-33), and Example IIIA comprises of 4.000 wt% phytic acid (Example IIIA, Col 19).
In regards to Claim 12-15, Ramji teaches an oral care composition comprising of dimethyl disulfide derived from the mint oil of Example I and resultant flavor ingredient of Example IIIA (Example 1, Col 18 and Example IIIA, Col 19).
In regards to Claim 16-17, Ramji teaches an oral care composition comprising stannous fluoride at 0.454 wt%.
However, Ramji does not teach hops extract, hops acid, hops beta acids, or hops alpha acid, but Ramji does teach beta-damascone as additional flavor additives (Col 7, line 1). For this reason, Baig is added.
Baig teaches an oral care composition in Example 5 comprising of Hops Beta acid at 0.50 wt%, SnCl2 at 1.00 wt%, sorbitol at 1.10 wt% (Table 1B, Col 23). Baig further teaches that the Hops Beta Acids extract comprises of 45 ± 2 wt% of Hops Beta Acids and 0.4 ± 0.3 wt% of Hops Beta Acids (Table 2A, Col 23).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the oral care composition of Ramji with the hops beta acid oral composition of Baig since both inventions are directed to same field of invention, and the addition of the optimized hops beta acid extract of Baig to Ramji represents a combination of known prior art elements to yield predictable results with a reasonable expectation of success. A person having ordinary skill in the art would have been motivated to do so since Baig teaches that the combination of hops beta acid and stannous chloride resulted in unexpectedly high improvement of antibacterial activity than compositions without hops beta acid. For the foregoing reasons, Claims 1-17 are rendered obvious by the teachings of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENHAN LI whose telephone number is (571)272-9143. The examiner can normally be reached Monday-Friday 7:30 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.L./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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