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 . 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on 01/05/2026, is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 01/05/2026.
Claim Rejections - 35 USC § 112 –
Broad Limitation followed by Narrow Limitation
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 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 10 recites the broad recitation “camellia oil”, and the claim also recites “(or tea seed oil)” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The Applicant is encouraged to remove the parenthesis from the claim.
Claim Rejections - 35 USC § 103 - Obviousness
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.
Claim(s) 1, 3-9, 11-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lindsay et al (US 2022/0339087 A1), in view of Toyohara et al (US 2016/0355456 A1).
Lindsay taught deodorant sticks [abstract and title], generally comprising extracts of coffee bean [0009], in a coconut oil [0006, 0023, 0054, 0064].
Lindsay differs from the instant invention, in that Lindsay was not specific roasted coffee, as recited in claim 1.
Toyohara taught plant extracts having deodorizing properties [abstract, ¶0045], wherein said extracts desirably comprised roasted coffee beans [¶s 0018, 0027, 0039, 0042].
Since Lindsay taught deodorants, generally comprising coffee extracts, it would have been prima facie obvious to one of ordinary skill in the art to include, within Lindsay, roasted coffee, as taught by Toyohara. The ordinarily skilled artisan would have been motivated to include a desirable extract with deodorizing properties, as taught by Toyohara [¶s 0018, 0027, 0039, 0042, 0045; abstract]. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. In the instant case, it is prima facie obvious to select roasted coffee beans for incorporation into a deodorant composition, based on their recognized suitability for the intended use as deodorizing agents, as taught by Toyohara. See MPEP 2144.07.
Claims 3-6 are rendered prima facie obvious because Lindsay taught waxes and starch [claim 1], including white beeswax [0020] and corn starch [0016].
Claim 7 is rendered prima facie obvious because Lindsay taught xanthan gum [0016].
Claim 8 is rendered prima facie obvious because Lindsay taught magnesium hydroxide [0003].
Claim 9 is rendered prima facie obvious because Lindsay taught shea butter [0025].
The instant claim 11 recites “wherein the oil extract [is] produced synthetically by mixing a plurality of components present in roasted coffee beans with an oil”. The limitation of synthetically producing the composition by mixing a plurality of components is a product-by-process limitation. Product by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.
Even though product-by-process claims are limited by and defined by the process, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product, in the product-by-process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In the instant case, Lindsay’s and Toyohara’s composition of mixed ingredients [see Lindsay at ¶0004-0005; Examples 1-8; see Toyohara at ¶0063] reads on the claimed synthetic composition produced by mixing a plurality of components. As such, the patentability of the instant composition does not depend on its method of production, and the Applicant’s limitation regarding the process of producing the composition is not patentable, in view of the combined teachings of Lindsay and Toyohara. MPEP 2113.
Claim 12 is rendered prima facie obvious because Lindsay taught coffee beans provided via a plant extract; plant-derived waxes (e.g., reads on all-natural components) [0009, 00018].
Claim 14 is rendered prima facie obvious because Lindsay taught oils, as useful at 5 % or greater, or at 6 % to 23 % [0018].
The instant claim 14 recites from about 5 % to 30 % oil.
Lindsay taught oils at 5 % or greater, or at 6 % to 23 %. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. MPEP 2144.05 A.
Claims 2, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Lindsay et al (US 2022/0339087 A1), in view of Toyohara et al (US 2016/0355456 A1) and further in view of Sturgis et al (US 2019/0000736 A1).
The 35 U.S.C. 103 rejection over Lindsay, in view of Toyohara, was previously described.
Additionally, Lindsay generally taught antimicrobial agents [0014]; xanthines (e.g., coffee beans) present at 0.1 to 7 % [0007-0009].
Although the combined teachings of the art taught coconut oil, the combined art was not specific fractionated coconut oil, as recited in claim 2. Lindsay did not teach cinnamon oil, as recited in claim 10; the amount of oil, as recited in claim 13.
Sturgis taught deodorant sticks [abstract and title] comprising fractionated coconut oil (from about 5 % to about 35 %) as a structurant [0079-0080; claim 8], and cinnamon essential oil [0058] as an antimicrobial.
Since Lindsay taught deodorant sticks, it would have been prima facie obvious to one of ordinary skill in the art to include, within the combined teachings of Lindsay and Toyohara, fractionated coconut oil, as taught by Sturgis. The ordinarily skilled artisan would have been motivated to include, within Lindsay’s sticks, a structural element, as taught by Sturgis [0080; claims 8 and 15].
The ordinarily skilled artisan would have been motivated to include Sturgis’ structurants within Lindsay, at amounts from about 5 % to about 35 %, because at the said amounts, and when included within deodorants, the ingredient acts as a structural element, as taught by Sturgis at [0079-0080].
Since Lindsay generally taught antimicrobial agents, it would have been prima facie obvious to one of ordinary skill in the art to include, within the combined teachings of Lindsay and Toyohara, cinnamon essential oil, as taught by Sturgis. In the instant case, it is prima facie obvious to select cinnamon essential oil for incorporation into a deodorant composition, based on its recognized suitability for the intended use an antimicrobial, as taught by Toyohara.
The instant claim 2 recites fractionated coconut oil having a concentration of C12 or higher fatty acids of less than or equal to about 5 wt. %.
The originally filed disclosure [0017] states that fractionated coconut oil is purified, with less than about 5 wt. % of C12 and higher fatty acids.
It appears that the compositions of the instant claims (deodorant with fractionated coconut oil) and those of the prior art (deodorant with fractionated coconut oil) would reasonably be expected to have substantially the same physical and chemical properties (less than about 5 wt. % of C12 and higher fatty acids). Inherent features need not be recognized at the time of the invention. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. MPEP 2112 II. It should be noted that a chemical composition and its properties are inseparable. If the prior art teaches the identical chemical compounds (fractionated coconut oil), then the properties (less than about 5 wt. % of C12 and higher fatty acids ) that the Applicant discloses and/or claims are necessarily present.
The instant claim 13 recites “wherein the oil extract …is formed by extracting roasted coffee beans with fractionated coconut oil…”. The limitation of forming the composition by extracting coffee beans with fractionated coconut oil is a product-by-process limitation. Product by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.
Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product, in the product-by-process claim is the same as or obvious from a product of the prior art, then the claim is unpatentable even though the prior art product was made by a different process. In the instant case, Lindsay’s, Toyohara’s and Sturgis’ combined composition of roasted [Toyohara] coffee beans in coconut oil [Lindsay], further limited to fractionated coconut oil [Sturgis], reads on the claimed composition. As such, the patentability of the instant composition does not depend on its method of formation, and the Applicant’s limitation regarding the process of forming the composition is not patentable, in view of the combined teachings of Lindsay, Toyohara and Sturgis. MPEP 2113.
The instant claim 13 further recites a weight-to-weight ratio of the fractionated coconut oil to the coffee beans from about 90:10 to about 10:90.
Sturgis taught fractionated coconut oil from about 5 % to about 35 % by weight. Lindsay taught xanthines (e.g., coffee beans) present at 0.1 to 7 %. A prima facie case of obviousness exists because of overlap, as discussed above.
Conclusion
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/CELESTE A RONEY/Primary Examiner, Art Unit 1612