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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statements (IDS) filed on 11/26/2025 have been considered here.
Status of Claims
Claims 1-20 are now pending and will be examined on the merits herein.
Claim Objections
Claim 5 is objected to because of the following informalities: Rosemary oil is listed twice in the list of active ingredients, when it should only be listed once. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to laws of nature and natural phenomena without significantly more.
The claims recite natural phenomena. These judicial exceptions are not integrated into a practical application and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as explained below:
Subject Matter Eligibility Guidance
A three-step inquiry has been established to determine subject matter eligibility under 35 U.S.C. 101, in accordance with MPEP §2106:
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Step (1): Is the claim directed to a process, machine, manufacture, or composition of matter?
Step (2A): Is the claim directed to a law of nature, natural phenomenon (product of nature), or an abstract idea?
Prong 1 – Does the claim recite a law of nature, natural phenomenon, or an
abstract idea?
Prong 2 – If the claim recites a judicial exception, does it recite additional elements that integrate the judicial exception into a practical application?
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field. See MPEP §2106.05(a)
Applying the judicial exception with, or by use of, a particular machine. See MPEP §2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing. See MPEP §2106.05(c)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. See MPEP §2106.05(d)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §2106.05(e)
Step (2B): If the recited judicial exception is not integrated into a practical application, does the claim recite additional elements that amount to significantly different than the judicial exception such that they provide an inventive concept? This step includes evaluation of the same considerations under Step (2A), Prong 2, as well as two additional considerations:
Adding a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; and
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Analysis
Step (1): The answer to this step is yes since claims 1-20 are directed to a composition of matter, which is a statutory category.
Step (2A): The answer to this step is yes because the claimed compositions are directed to laws of nature and natural phenomena, specifically a composition comprising an active ingredient and vitamin E, vitamin C, or a combination thereof.
Prong 1:
Product of Nature Definition
When a law of nature or natural phenomenon is claimed as a physical product, the courts have often referred to the exception as a "product of nature". See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 580, 106 USPQ2d 1972, 1975 (2013); University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 758-59, 113 USPQ2d 1241, 1243 (Fed. Cir. 2014). As explained in those decisions, products of nature are considered to be an exception because they tie up the use of naturally occurring things, but they have been labeled as both laws of nature and natural phenomena. See Myriad Genetics, Inc., 569 U.S. at 590-91, 106 USPQ2d at 1979.
Claim Analysis
Independent claim 1 recites a composition comprising one or more active ingredients and a corrosion inhibitor, wherein the corrosion inhibitor is selected from the group consisting of vitamin C, vitamin E, and combinations thereof.
In the instant case, the scope of the positively recited elements of the composition defines it in terms of naturally-occurring compounds, and as such the cosmetic is defined as consisting of naturally-occurring compounds. The composition of the claims is merely taking naturally occurring materials and combining them, which does not add a meaningful limitation as it is merely a nominal or token extra-solution component of the claim and is nothing more than an attempt to generally link the product of nature a particular technological environment. While there are claims that recite a limitation of a specific pH, this is not a significant addition to the claims as citric acid, for example, is a naturally occurring pH modifier that can be found in nature. Further, specifically a plant, like a rosemary plant, comprises vitamin C and various compounds that are considered active ingredients (such as rosemary oil) and would read upon the instant claims. Thus, the pH is not a significant addition to the limitations of the claim. Therefore, the instant claim recites a product of nature.
The dependent claims simply recite more specific combinations of composition of claim 1, thus the is no significant addition to the limitations of the claim either. Therefore, the instant claims recite a product of nature.
There is no evidence within the specification that the compositions recited in claims 1-20 contain markedly different characteristics from their naturally-occurring counterparts.
Therefore, the answer to step 2A prong 1 is yes.
Prong 2:
The Prong Two analysis considers the claim as a whole. That is, the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception need to be evaluated together to determine whether the claim integrates the judicial exception into a practical application.
Here, the instantly amended claims do not introduce any additional limitations which transform or improve on the judicial exceptions recited in claim 1 and do not do anything beyond generally linking the use of the judicial exception to a particular technological environment.
Therefore, the answer to step 2A prong 2 is no.
Step (2B):
Claims 1-20 do not recite additional elements which require analysis under step 2B.
Therefore, the answer to step (2B) is no.
Conclusion
Claims 1-20 are directed to a judicial exception and do not qualify as eligible subject matter under 35 U.S.C. §101.
Claim Rejections - 35 USC § 102
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.
(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 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hinck (2018).
Hinck teaches that rosemary herb contains iron, calcium, rosemary oil, antioxidants and anti-inflammatory compounds (i.e., active ingredients) as well as vitamin C (see Hinck, paragraphs 1-4).
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, 4-10, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20230137223 A1 (Huber, 2023).
In regards to claims 1, 4-7, and 12, Huber teaches a composition for controlling pests (see Huber, abstract). The composition comprises rosemary oil, cornmint oil, peppermint, thyme oil, citronella oil, clove oil, ceder oil, or sodium lauryl sulfate (see Huber, paragraphs 0012-0013). The sodium lauryl sulfate is taught to be used in an amount of from about 1% to about 50% by weight of the composition (see Huber, paragraph 0012). The essential oils are taught to comprise from about 1% to about 75% by weight of the composition (see Huber, paragraph 0013). The composition is further taught to comprise inert ingredients in an amount from 0.5% to about 98% by weight of the composition (see Huber, paragraphs 0017 and 0049; Table 1). The inert ingredient is taught to be vitamin E (see Huber, paragraphs 0017 and 0049; Table 1) or ascorbic acid (i.e., vitamin C) (see Huber, Table 1). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 8-10, the composition is taught to comprise more than one inert material, which include citric acid, potassium oleate, glycerin (see Huber, paragraphs 0017-0018 and 0049; Table 1). The composition is taught to comprise inert ingredients in an amount from 0.5% to about 98% by weight of the composition (see Huber, paragraphs 0017 and 0049; Table 1).
In regards to claim 14, the composition comprises a solvent, such as isopropyl alcohol (i.e., isopropanol) in an amount of about 1% to about 90% by weight (see Huber, paragraphs 0017-0018, 0047, 0088-0089).
Huber does not teach with sufficient specificity to anticipate and so the claims are obvious. It would be obvious to one with ordinary skill in the art before the effective filing date to rearrange the teachings of Huber with a reasonable expectation of success to obtain the composition of the instant claims.
A reference is analyzed using its broadest teachings. MPEP 2123 [R-5]. “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. A person of ordinary skill in the art who is not an automaton is capable of producing the composition of the instant claims with predictable results.
Claims 2-3, 11, 13, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over US PGPUB 20230137223 A1 (Huber, 2023) as applied to claims 1, 4-10, 12, and 14 above, and further in view of WO 9534210 A1 (Furuta, 1995; machine translation provided by PE2E via FIT).
The teachings of Huber have been described supra.
The teachings of Huber are silent on the pH of the composition and the amount of citric acid being from 0.001 to about 0.1% by weight of the composition.
In regards to claims 2-3, 11, 15, and 18, Furuta teaches a composition comprising a pesticide (see Furuta, page 6, paragraph 3). The composition is taught to comprise citric acid in an amount from 0.1% by weight (see Furuta, page 32, Table 5). The composition is also taught to comprise tocopherol (i.e., vitamin E) (see Furuta, paragraph bridging pages 8-9). The composition is taught to have a pH of about 3 to about 11 (see Furuta, page 9, paragraph 3). Further the composition is taught to comprise an active ingredient, e.g. a copper compound, in an amount from 0.0005 to 9.9% by weight (see Furuta, page 18, paragraphs 7-8). MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claim 13, the composition is taught to comprise a propellant comprised of compressed gas such as nitrogen and carbon dioxide (see Furuta, page 7, paragraph 1).
In regards to claims 1-20, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings of Huber with the teaching of Furuta to formulate the instant composition as both references are drawn to using similar ingredients (citric acid, vitamin E, an active ingredient). Further Furuta teaches that the composition as taught comprises a pesticide (e.g. like the one taught in Huber). "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose .... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). One with ordinary skill in the art would be motivated to combine the composition of Huber with the teachings of Furuta according to the known method of formulating a pesticide (see Huber, paragraphs 0069-0075) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Conclusion
No claims allowed.
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/ISIS A GHALI/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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