DETAILED ACTION
Status of Claims
The amendments, and arguments, filed June 11, 2026, are acknowledged and have been fully considered. Claims 57-72 and 74-78 are pending. Claims 57-59 and 61-62 have been amended; new claims 74-77 have been added; claim 78 has been withdrawn; claim 73 has been cancelled; and claims 1-56 were previously cancelled. Claims 57-72 and 74-77 are currently under consideration. The present application is being examined under the pre-AIA first to invent provisions.
Status of Office Action: Final
Withdrawn Claim Rejections
The rejection of claim 57 under 35 U.S.C. § 112 (b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite (item A. at par. 5-6 of the 02/11/2026 Office action), is maintained in modified form, in light of applicant’s 06/11/2026 amendments.
The rejection of claims 57-63 and 69-72 under 35 U.S.C. § 103 (a) over KOLBE (WO 2013/041526 A1, as evidenced by US 2014/0121250 A1), in view of FULLER (US 2010/0249244 A1) (at par. 7-17 of the 02/11/2026 Office action), is withdrawn in light of applicant’s 06/11/2026 amendments (in particular, the amendments to independent claim 57 reciting “[a] cosmetic or dermatological preparation, wherein the preparation comprises one or more alkylamidothiazoles which comprise N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide and benzyl benzoate or hexyl salicylate, wherein the preparation further comprises one or more fragrances”), in favor of the new rejections discussed below.
The rejection of claims 64-67 under 35 U.S.C. § 103 (a) over KOLBE, in view of FULLER, and further in view of WÖHRLE (US 2011/0104089 A1) (at par. 18-22 of the 02/11/2026 Office action), is withdrawn in light of applicant’s 06/11/2026 amendments, in favor of the new rejections discussed below.
The rejection of claim 68 under 35 U.S.C. § 103 (a) over KOLBE, in view of FULLER, and further in view of CAETANO (CA 2706992 A1) (at par. 23-27 of the 02/11/2026 Office action), is withdrawn in light of applicant’s 06/11/2026 amendments, in favor of the new rejections discussed below.
Election/Restrictions
Applicant’s election of the claims of Group I in the response filed on November 14, 2016 (to the September 16, 2016 Requirement for Restriction) is acknowledged. In response to applicant’s election, new claim 78 relating to Group II is withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Accordingly, claims 57-72 and 74-77 are examined as follows.
Maintained Claim Objections
The following claims are objected to because of the following informalities: Claim 58 is objected to because:
“benzyl alcohol DD” should be first recited as “benzyl alcohol DD (benzyl alcohol double distilled),” and
“menthyl PCA” should be first recited as “menthyl pyrrolidone carboxylate (menthyl PCA),”
because the first recitation of an acronym should be spelled completely, followed by a parenthetical acronym, e.g., “benzyl alcohol DD (benzyl alcohol double distilled),” with subsequent recitations of the acronym, alone.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 112 - Indefiniteness
The following is a quotation of the second paragraph of pre-AIA 35 U.S.C. § 112:
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 57-72 and 74-77 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 pre-AIA , that applicant regards as the invention.
Modified Claim Rejections – 35 U.S.C. § 112 – Indefiniteness – Necessitated by Amendments
A. Claim 57 is drawn to:
57. ([…]) A cosmetic or dermatological preparation, wherein the preparation comprises one or more alkylamidothiazoles which comprise N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide and benzyl benzoate or hexyl salicylate, wherein the preparation further comprises one or more fragrances.
57. (new) A cosmetic or dermatological preparation, wherein the preparation comprises one or more alkylamidothiazoles which comprise N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide and two or more fragrances which comprise isoeugenol.
wherein the use of “and” and “or” in the recitation, “one or more alkylamidothiazoles which comprise N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide and benzyl benzoate or hexyl salicylate,” is indefinite because it is unclear whether the claim requires:
“one or more alkylamidothiazoles which comprise […]” and EITHER (1) “benzyl benzoate” OR (2) “hexyl salicylate”; OR
EITHER (1) “one or more alkylamidothiazoles which comprise […] and benzyl benzoate” OR (2) “hexyl salicylate” as separate claim embodiments.
In this regard, it is noted that the Board has held: “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (expanded panel). Subsequent claims 58-72 and 74-77 depend on claim 57 and are thus, indefinite as well.
Maintained Claim Rejections
B. Claims 58-59 contains the trademark/trade name “Florosa.” Where 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 requirements 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 “tetrahydro-4-methyl-2-(2-methylpropyl)-2H-pyran-4-ol” or “floral pyranol,” and accordingly, the identification/description is indefinite.
C. Claims 58-59 contains the trademark/trade name “lilial.” Where 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 requirements 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 “butylphenyl methylpropional,” and, accordingly, the identification/description is indefinite.
D. Claims 58-59 contains the trademark/trade name “Florosa.” Where 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 requirements 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 “florosol,” and, accordingly, the identification/description is indefinite.
E. Claims 58-59 contains the trademark/trade name “Macrolide Supra.” Where 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 requirements 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 “pentadecan-15-olide,” and, accordingly, the identification/description is indefinite.
F. Claims 58-59 contains the trademark/trade name “lyral.” Where 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 requirements 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 “(4-(4-hydroxy-4-methylpentyl)-3-cyclohexene-1-carboxaldehyde),” and, accordingly, the identification/description is indefinite.
G. Claims 58-59 contains the trademark/trade name “tetrahydromuguol.” Where 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 requirements 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 “3,7-dimethyloctan-3-ol,” and, accordingly, the identification/description is indefinite.
H. Claims 58-59 and 64 contains the trademark/trade name “Iso E Super.” Where 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 requirements 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 “1-(2,3,8,8-tetramethyl-1,2,3,4,5,6,7,8-octahydronaphthalen-2-yl)ethenone” or “patchouli ethenone,” and accordingly, the identification/description is indefinite.
Further clarification is required.
Response to Arguments
Applicants’ arguments, filed on June 11, 2026 (hereinafter, referred to as “Remarks”), have been fully considered, but they are not persuasive. The claims do not appear to have not been amended to remove the trademarks. The claims containing the indicated trademark names at items B. through H., above, should be amended to recite the corresponding generic names noted above.
New Claim Rejections – 35 U.S.C. § 103 - Necessitated by Amendments
The following is a quotation of pre-AIA 35 U.S.C. § 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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).
Claims 57-67, 69-72 and 74-77 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over KOLBE (WO 2013/041526 A1, Publ. Mar. 28, 2013; as evidenced by US 2014/0121250 A1; hereinafter “Kolbe”; of record), in view of WÖHRLE (US 2011/0104089 A1, Publ. May 5, 2011; hereinafter, “Wöhrle”; of record). and FULLER (US 2010/0249244 A1, Publ. Sep. 30, 2010; hereinafter, “Fuller”; of record).
Paragraph numbers for Fuller refer to US 2014/0121250 A1 as an English language translation of WO 2013/041526 A1.
Kolbe is directed to:
ALKYLAMIDOTHIAZOLES, COSMETIC OR DERMATOLOGICAL PREPARATIONS CONTAINING SAID ALKYLAMIDOTHIAZOLES, AND USE THEREOF TO COMBAT OR PREVENT UNDESIRED PIGMENTATION OF THE SKIN
ABSTRACT
Alkylamidothiazoles of general formula (I), wherein R 1= -C1-C24 alkyl (linear and branched), —C1-C24 alkenyl (linear and branched), —C1-C8 cycloalkyl, —C1-C8 cycloalkyl-alkylhydroxy, —C1-C24 alkylhydroxy (linear and branched), —C1-C24 alkylamine (linear and branched), —C1-C24 alkylaryl (linear and branched), —C1-C24 alkylaryl-alkyl-hydroxy (linear and branched), —C1-C24 alkyl-heteroaryl (linear and branched), —C1-C24-alkyl-O—C1-C24-alkyl (linear and branched), —C1-C24 alkyl morpholino, —C1-C24 alkyl piperidino, —C1-C24 alkyl piperazino, —C1-C24 alkyl-piperazino-N-alkyl, as well as cosmetic or dermatological preparations having an effective content of one or more alkylamidothiazoles, as well as the use thereof for the cosmetic or dermatological treatment and/or prophylaxis of undesired skin pigmentation.
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Kolbe, title & abstract. In this regard, Kolbe teaches alkylamidothiazoles corresponding to those of the instantly claimed invention, including applicant’s elected species N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide (Kolbe, par. [0032]), and compositions comprising said compounds for treatment of undesired skin pigmentation (Kolbe, claim 27).
Regarding independent claim 57 and the requirements:
57. ([…]) A cosmetic or dermatological preparation, wherein the preparation comprises one or more alkylamidothiazoles which comprise N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide and benzyl benzoate or hexyl salicylate, wherein the preparation further comprises one or more fragrances.
Kolbe clearly teaches N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide (Kolbe, par. [0032]), and compositions thereof (Kolbe, claim 27), which meets the requirements of claim 57 for “one or more alkylamidothiazoles which comprise N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide.” However, it is noted that Kolbe DOES NOT TEACH:
(i) the compounds, “benzyl benzoate” or “hexyl salicylate,” as required by claim 57, as well as claims 65-66:
65. ([…]) The preparation of claim 57, wherein the preparation further comprises benzyl benzoate.
66. ([…]) The preparation of claim 57, wherein the preparation further comprises hexyl salicylate.
and claims 64 and 67 for “Iso E Super” and “benzyl salicylate”:
64. ([…]) The preparation of claim 57, wherein the preparation further comprises Iso E Super.
[…]
67. ([…]) The preparation of claim 57, wherein the preparation further comprises benzyl salicylate.
(ii) “one or more fragrances” such as “isoeugenol (IE)” or “cinnamaldehyde” as required by claim 57, as well as claims 58-59:
58. ([…]) The preparation of claim 57, wherein the one or more fragrances comprise one or more of coumarin (CAS No.: 91-64-5), iraldeine alpha iff (CAS No.: 127-41-3), farnesol (CAS No.: 4602-84-0), Lilial (CAS No.: 80-54-6), orange oil bitter (CAS No.: 8028-48-6), florosa (CAS No.: 63500-71-0), hexyl salicylate (CAS No.: 6259-76-3), phenylethyl alcohol (CAS No.: 60-12-8), benzyl benzoate M (CAS No.: 120-51-4), hydroxycitronellal (CAS No.: 107-75-5), Macrolide Supra (CAS No.: 106-02-5), Phenoxanol (CAS No.: 55066-48-3), Geraniol Supra (CAS No.: 106-24-1), dihydromyrcenol (CAS No.: 18479-58-8), cinnamaldehyde (CAS No.: 104-55-2), Lyral (CAS No.: 31906-04-4), isoeugenol (CAS No.: 97-54-1), anise alcohol (CAS No.: 105-13-5), terpineol pure (CAS No.: 98-55-5), bergamot oil (CAS No.: 8007- 75-8), hedione (CAS No.: 24851-98-7), vanillin (CAS No.: 121-33-5), thymol (CAS No.: 89-83-8), linalyl acetate (CAS No.: 115-95-7), linalool aroma (CAS No.: 78-70-6), hexenol cis-3 (CAS No.: 928-96-1), tetrahydromuguol (CAS No.: 78-69-3), limonene D pure (CAS No.: 5989-27-5), benzyl salicylate (CAS No.: 118-58-1), benzyl cinnamate (CAS No.: 103-41-3), Iso E Super (CAS No.: 54464-57-2), citronellol 950 (CAS No.: 106-22-9), benzyl alcohol DD (CAS No.: 100-51-6), ethyl vanillin (CAS No.: 121-32-4), eugenol (CAS No.: 97-53-0), methyl heptyne carbonate (CAS No.: 111-12-6), citral 95 (CAS No.: 5392-40-5), alpha hexylcinnamaldehyde (CAS No.: 101-86-0), benzyl acetate (CAS No.: 140-11-4), ethyl linalool (CAS No.: 10339-55-6), iraldeine gamma coeur 262654 (CAS No.: 79-68-5), amylcinnamaldehyde (CAS No.: 122-40-7), alpha isomethylionone (CAS No.: 127-51-5), methyl benzoate (CAS No.: 93-58-3), alpha-methylionone (CAS No.: 7779-30-8), 2-tert-pentylcyclohexyl acetate (CAS NO.: 67874-72-0), 7-acetyll, 1,3,4,4,6-hexamethyltetralin (CAS No.: 1506-02-1), adipic acid diester, amyl salicylate (CAS No.: 2050-08-0), amylcinnamyl alcohol (CAS No.: 101-85-9), amyl C butylphenylmethylpropionalcinnamal, benzoin (CAS No.: 119-53-9, 5928-66-5, 5928-67-6), bitter orange oil (CAS No.: 8008-57-9), sweet orange oil (CAS No.: 8028-48-6), cardamom oil (CAS No.: 800-66-6), cedrol (CAS No.: 77-53-2), cinnamyl alcohol (CAS No.: 104-51-1), citronellyl methylcrotonate (CAS No.: 20770-40-5), lemon oil (CAS No.: 84929-31-7), diethyl succinate (CAS No.: 123-25-1), Evernia furfuracea extract (CAS No.: 90028-67-4), Evernia prunastri extract (CAS No.: 90028-68-5), guaiac wood oil (CAS No.: 9000-29-7), hexyl cinnamal (CAS No.: 101-86-0), lavender oil (CAS No.: 800-28-0), limonene oil (CAS No.: 8008-26-2), mandarin oil (CAS No.: 8016-85-1), menthyl PCA (CAS No.: 64519-44-4/ 68127-22-0), methylheptenone (CAS No.: 402-02-9), nutmeg oil (CAS No.: 8008-45-5), rosemary oil (8000-25-7), tonka bean oil (CAS No.: 8046-22-8) and triethyl citrate (CAS No.: 77-93-0).
59. ([…]) The active ingredient combination of claim 57, wherein the two or more fragrances comprise one or more of coumarin, Iraldein alpha iff, farnesol, lilial, bitter orange oil, Florosa, hexyl salicylate, phenylethyl alcohol, Benzylbenzoate M, hydroxycitronellal, Macrolide Supra, phenoxanol, Geraniol Supra, dihydromyrcenol, cinnamaldehyde, lyral, isoeugenol, terpineol pure, vanillin, thymol, linalyl acetate, linalool aroma, Limonene D pure, benzyl salicylate, Iso E Super, citronellol 950, benzyl alcohol DD, eugenol, Citral 95, ethyllinalool, Iraldein gamma Coeur 262654, alpha-isomethylionone, methyl benzoate, alpha-methylionone, bitter orange oil, sweet orange oil, lemon oil, Evernia Prunastri Extract, hexylcinnamal, menthyl PCA, rosemary oil, triethyl citrate.
Based on the state of the art, an artisan of ordinary skill would have found each of these features obvious.
Regarding (i), Wöhrle, for instance, is directed to:
COMPOSITIONS COMPRISING FRAGRANCE SUBSTANCES AND NEOPENTYL GLYCOL DIISONONANOATE
ABSTRACT
The invention relates to the use of neopentyl glycol diisononanoate (CAS No. 27841-07-2) as a fixative for perfume oils or as a fixative for (top note) fragrance substances. The invention also relates to certain compositions containing neopentyl glycol diisononanoate and one or more top note fragrance substances. Furthermore, the invention relates to a method for producing such compositions and (cosmetic) products containing a composition according to the invention. Additionally the invention relates to a method for imparting, intensifying or modifying an odor on the (human) skin. A particular aspect of the present invention relates to the improved adherence of volatile fragrance substances to (human) skin and/or (human) hair. Apart from this the invention relates to a combination (kit) comprising neopentyl glycol diisononanoate and one or more top note fragrance substances.
Wöhrle, title & abstract. In this regard, Wöhrle discloses claim embodiments directed to a composition containing (A) neopentyl glycol diisononanoate, and (B) one or more fragrance substances:
1. A composition comprising
(A) neopentyl glycol diisononanoate,
and
(B) one or more fragrance substances,
wherein component (B) comprises
(B)(i) one or more fragrance substances with a molecular weight in a range of 100 g/mol-175 g/mol (top note).
2. The composition as claimed in claim 1, wherein a mass ratio of component (A) to a total mass of component (B) is in a range of 1:20-200:1.
3. The composition as claimed in claim 1, wherein component (B) further comprises
(B) (ii) one or more fragrance substances with a molecular weight in a range of greater than or equal to 190 g/mol (bottom note).
4. The composition as claimed in claim 1, wherein the one or more fragrance substances of component (B)(i) (top note) are selected from the group consisting of:
(B)(i) n-Heptanol, trans-9-decen-1-ol, camphor, alpha-pinene, beta-pinene, gamma-terpinene, alpha-phellandrene, alpha-terpineol, borneol, limonene, 6-methyl-5-hepten-2-one, n-octanal, eucalyptol (1,8-cineol), rose oxide, 3-hexenol, dihydromyrcenol(2,6-dimethyl-7-octen-2-ol), menthone, isomenthone, 2,6-dimethyl-5-hepten-1-al (Melonal), 3-hexenyl methyl carbonate, benzaldehyde, linalool, tetrahydrolinalool, tetrahydrogeraniol, citral, neral, geranial, benzyl alcohol, benzyl acetate, methyl cinnamate, p-anisaldehyde, menthol, isoamyl acetate, isoamyl butyrate, cis-3-hexenyl acetate, trans-3-hexenyl acetate, hexyl acetate, butyl butyrate, citronellol, nerol, geraniol, 2-phenylethyl alcohol, methyl benzoate, methyl anthranilate, styrallyl acetate, 2,4-dimethyl-3-cyclohexene carboxaldehyde (vertocitral), acetophenone, p-methyl acetophenone, cinammic alcohol, cinammic aldehyde, 3-phenyl propanol (dihydrocinammic alcohol), 2-methyl-1-phenyl-2-propanol (alpha,alpha-dimethyl phenethyl carbinol), anethole, anisalcohol, heliotropin, acetanisole (p-methoxy acetophenone) and agrunitrile (3,7-dimethyl-6-octen-1-nitrile).
5. The composition as claimed in claim 3, wherein the one or more fragrance substances of component (B)(ii) are selected from the group consisting of:
(B)(ii) a musk fragrance substance, alpha-n-amylcinnamaldeyde (MW=202.30), alpha-iso-amylcinnamaldehyde (MW=202.30), alpha-n-hexylcinnamaldehyde (MW=216.32), alpha-iso-hexylcinnamaldehyde (MW=216.32), benzyl salicylate (MW=228.25), cis-3-hexenyl salicylate (MW=220.27), isoamyl salicylate (MW=208.26), hexyl salicylate (MW=222.28), 2-methyl-3-(4-tert-butylphenyl)propanal (MW=204.31; Lilial®), 2-methyl-3-(4-isopropylphenyl)propanal (MW=190.28, cyclamen aldehyde), 2,3,8,8-tetramethyl-1,2,3,4,5,6,7,8-octahydro-2-naphthalenyl methyl ketone (MW=234.38, Iso E Super®), 1-[1,2,3,4,6,7,8,8a-octahydro-1,2,8,8-tetramethyl naphtalen-2-yl]ethanone (MW=234.38, Iso E Super®), methyl dihydrojasmonate (MW=226.32, Hedione®), linalyl acetate (MW=196.29), ethyllinalyl acetate (MW=210.31), nerolidol (MW=222.37), farnesol (MW=222.37), cedryl methyl ether (MW=236.40, Cedramber), cedryl methyl ketone (MW=246.39), cedryl acetate (MW=264.41), (4aR,5R,7aS,9R)-octahydro-2,2,5,8,8,9a-hexamethyl-4H-4-a,9-methanoazuleno(5,6-d) 1,3-dioxol) (MW=278.44, Ambrocenide®), hexahydro-1′,1′,5′,5′-tetramethyl-spiro[1,3-dioxolan,2,8′(5′H)-[2H-2,4-a]-methanonaphthalene (MW=264.41 ethylenedioxy-3H-isolongifolane, Ysamber® K), 2-methyl-4-(2,2,3-trimethyl-3-cyclopenten-1-yl)butanol (MW=196.34, Brahmanol), 5-(2,2,3-trimethyl-3-cyclopenten-1-yl)-3-methylpentan-2-ol (MW=210.36, Sandalore®), 2-ethyl-4-(2,2,3-trimethyl-3-cyclopenten-1-yl)-2-buten-1-ol (MW=208.35, Sandranol®), 3-methyl-5-(2,2,3-trimethyl-3-cyclopenten-1-yl)-4-penten-2-ol (MW=208.35, Ebanol®), 3,3-dimethyl-5-(2,2,3-trimethyl-3-cyclopenten-1-yl)-4-penten-2-ol (MW=222.37, Polysantol®), 3-isocamphylcyclohexanol (MW=236.40, Sandel 80®), 1-(2,2,6-trimethylcyclohexyl)hexan-3-ol (MW=226.41, Timberol®), cyclododecyl methyl ether (MW=198.35, Palisandin), (ethoxymethoxy)cyclododecane (MW=242.41, Boisambrene Forte®), 1-methyl-4-(4-methyl-3-penten-1-yl)-3-cyclohexene carboxaldehyde (MW=206.33, Precyclemone B®), 4-(4-hydroxy-4-methylpentyl)-3-cyclohexene carboxaldehyde (MW=210.32, Lyral®), 2-methyl-4-(2,2,6-trimethyl-1-cyclohexen-1-yl)-2-butenal (MW=206.33, Boronal), decahydro-beta-naphthyl acetate (MW=196.29), allyl-3-cyclohexyl propionate (MW=196.29), allyl (cyclohexyloxy)acetate (MW=198.26, Isoananat®), citral diethyl acetal (MW=226.36), benzyl benzoate (MW=212.25), benzyl cinnamate (MW=238.29), 3a,6,6,9a-tetramethyl dodecahydronaphtho[2,1-b]furane (MW=236.40, Ambroxid®), alpha-iron (MW=206.33), beta-iron (MW=206.33), alpha-n-methyl ionone (MW=206.33), beta-n-methyl ionone (MW=206.33), alpha-isomethyl ionone (MW=206.33), beta-isomethyl ionone (MW=206.33) and allyl ionone (MW 232.35), 2,3,8,8-tetramethyl-1,2,3,4,5,6,7,8-octahydro-2-naphthalenyl methyl ketone (MW=234.38), 1-[1,2,3,4,6,7,8,8a-octahydro-1,2,8,8-tetramethyl naphtalen-2-yl]ethanone (MW=234.38), isobornyl acetate (MW=196.29), alpha-ionone (MW=192.30), beta-ionone (MW=192.30), gamma-ionone (MW=192.30), alpha-damascone (MW=192.30), beta-damascone (MW=192.30), delta-damascone (MW=192.30), 1-(2,4,4-trimethyl-2-cyclohexen-1-yl)-2-buten-1-one (MW=192.30, isodamascone), cedrol (MW=222.40), gamma-dodecalactone (MW=198.30), 2-methyl-3-(3,4-methylenedioxyphenyl)propanal (MW=192.22, Helional) and methyl dihydrojasmonate (MW=226.31).
[…]
9. The composition as claimed in claim 1 comprising
(A) neopentyl glycol diisononanoate in a total quantity of 0.25-30 wt. %
and
(B) one or more fragrance substances in a quantity of 0.15-5 wt. %, wherein component (B) comprises
(B)(i) one or more fragrance substances with a molecular weight in the range of 100 g/mol-175 g/mol (top note),
and/or
(B)(ii) one or more fragrance substances with a molecular weight in a range of greater than or equal to 190 g/mol (bottom note),
and/or
(C) one or more cosmetically acceptable solubilizers for component (B) selected from the group consisting of
(C)(ii) dipropylene glycol, diethyl phthalate, triethyl citrate, isopropyl myristate and triacetin, wherein the total quantity of component (C) (ii) is up to 80 wt % in relation to a total weight of component (B),
and/or
(D) one or more diols or triols with 3-12 C-atoms in a total quantity of 0.2-20 wt. %
in relation to a total weight of the composition.
(Wöhrle, claims 1-5 and 9), wherein (B)(ii) “bottom note” fragrances (Wöhrle, claims 3 and 5) include one or more of “Iso E Super” (Wöhrle, claim 5), “benzyl benzoate” (Wöhrle, claim 5), “hexyl salicylate” (Wöhrle, claim 5), and “benzyl salicylate” (Wöhrle, claim 5), which are the above-noted compounds of claims 64-67.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to further incorporate one or more of “Iso E Super,” “benzyl benzoate,” “hexyl salicylate,” and/or “benzyl salicylate” per Wöhrle (Wöhrle, claim 5) into the composition of Kolbe. One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of a bottom note fragrance (Wöhrle, claims 3 and 5) suitable for a cosmetic product (Wöhrle, abstract).
Therefore, the prior art renders (i) obvious.
Regarding (ii), Fuller, for instance, is directed to:
METHODS AND COMPOSITIONS FOR TREATING DERMATOLOGICAL DISEASES AND CONDITIONS
ABSTRACT
The presently claimed and disclosed inventive concept(s) contemplates compositions comprising compounds, in particular dihydroeugenol (DHE) and/or isoeugenol (IE) and/or ethyl vanillin (EV) or salts, esters, ethers, or derivatives thereof, and methods for topically or systemically delivering them for treatment against inflammation-related and other dermatological conditions such as described herein. These DHE and/or IE and/or EV or salts, esters, ethers or derivatives thereof also are delivered to a measurable extent transepidermally or transdermally. In one of its method aspects, this presently claimed and disclosed inventive concept(s) is directed to a method for treating a patient with a dermatological disease or condition by topically administering to said patient a pharmaceutical or cosmetic composition comprising a pharmaceutically or cosmetically acceptable topical carrier and an effective dermatological disease, disorder or condition-treating amount of a formulation of DHE and/or IE and/or EV, or salts, esters, ethers, or derivatives thereof. In particular, the presently claimed and disclosed inventive concept(s) is directed to a method of using a composition comprising one or more of DHE and/or IE and/or EV or salts, esters, ethers, or derivatives for treating dermatologic diseases, disorders or conditions, aging effects related to decreasing production of collagen, elastin, or hyaluronic acid, or to hyperpigmentation. The formulations may further contain cinnamaldehyde.
(Fuller, title & abstract), wherein “isoeugenol (IE)” and “cinnamaldehyde” are noted as “one or more fragrances” as required by claim 57, as well as claims 58-59. Also, in this regard, Fuller exemplifies treatment of hyperpigmentation with isoeugenol acetate. Fuller, par. [0020]-[0022], & Fig.’s 15-17.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to include isoeugenol and cinnamaldehyde per Fuller, in Kolbe’s preparation, thus arriving at the claimed invention. One skilled in the art would be motivated to do so, with a reasonable expectation of success, because both references are directed to the treatment of hyperpigmentation, and the addition of isoeugenol provides the benefits of additional treatment of hyperpigmentation, as taught by Fuller. 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. See § MPEP 2144.06.
Therefore, the prior art renders (ii) obvious.
Thus, the prior art renders claims 57-59 and 64-67 obvious.
Regarding claims 60-62, 69-72 and 74-76 and the requirements:
60. ([…]) The preparation of claim 57, wherein the preparation comprises a total of from 0.00001 % by weight to 10 % by weight of the two or more fragrances, based on a total weight of the preparation.
61. ([…]) The preparation of claim 60, wherein the preparation comprises a total of from 0.001 % by weight to 5 % by weight of the two or more fragrances.
62. ([…]) The preparation of claim 60, wherein the preparation comprises a total of from 0.005 % by weight to 3 % by weight of the two or more fragrances.
[…]
69. ([…]) The preparation of claim 57, wherein the preparation comprises at least 0.01 % by weight of N-( 4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide, based on a total weight of the preparation.
70. ([…]) The preparation of claim 57, wherein the preparation comprises not more than 0.35 % by weight of N-( 4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide, based on a total weight of the preparation.
71. ([…]) The preparation of claim 60, wherein the preparation comprises at least 0.01 % by weight of N-( 4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide, based on a total weight of the preparation.
72. ([…]) The preparation of claim 62, wherein the preparation comprises at least 0.01 % by weight of N-( 4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide, based on a total weight of the preparation.
[…]
74. ([…]) The preparation of claim 57, wherein the preparation comprises from 0.01 % to 0.35% by weight of N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide, based on a total weight of the preparation.
75. ([…]) The preparation of claim 57, wherein the preparation comprises from 0.005% to 3% by weight of benzyl benzoate, based on a total weight of the preparation.
76. ([…]) The preparation of claim 57, wherein the preparation comprises from 0.005% to 3% by weight of hexyl salicylate, based on a total weight of the preparation.
It is noted that:
Kolbe teaches cosmetic or dermatological preparations comprising 0.000001 to 10% by weight of alkylamidothiazole (Kolbe, claim 28);
Fuller teaches isoeugenol is present from about 0.001 to about 20% by weight (Fuller, par. [0108]) and 0.01% to 5% cinnamaldehyde (Fuller, par. [0058]); and
Wöhrle teaches (B)(ii) “bottom note” fragrances (Wöhrle, claims 3 and 5) include one or more of “Iso E Super” (Wöhrle, claim 5), “benzyl benzoate” (Wöhrle, claim 5), “hexyl salicylate” (Wöhrle, claim 5), and “benzyl salicylate” (Wöhrle, claim 5), which may be incorporated in “(B) one or more fragrance substances in a quantity of 0.15-5 wt. %” (Wöhrle, claim 9).
See MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges.
Thus, the prior art renders claims 60-62, 69-72 and 74-76 obvious.
Regarding claims 63 and the requirements:
63. ([…]) The preparation of claim 57, wherein the preparation is an O/W emulsion.
Kolbe teaches suitable cosmetic and dermatological preparations including a “oil-in-water (O/W) type” emulsion (Kolbe, par. [0072]).
Thus, the prior art renders claim 63 obvious.
Regarding claims 77 and the requirements:
77. ([…]) The preparation of claim 57, wherein the N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide is present as a halide, carbonate, ascorbate, sulfate, acetate, and/or phosphate salt.
Kolbe teaches:
[0021] Said thiazoles can either be in the form of the free base or the salt: e.g. fluoride, chloride, bromide, iodide, sulfate, carbonate, ascorbate, acetate or phosphate. In particular in the form of halogen salts, such as e.g. chloride and bromide.
(Kolbe, par. [0021]).
Thus, the prior art renders claim 77 obvious.
Claim 68 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over KOLBE (WO 2013/041526 A1, Publ. Mar. 28, 2013; as evidenced by US 2014/0121250 A1; hereinafter “Kolbe”; of record), in view of WÖHRLE (US 2011/0104089 A1, Publ. May 5, 2011; hereinafter, “Wöhrle”; of record). and FULLER (US 2010/0249244 A1, Publ. Sep. 30, 2010; hereinafter, “Fuller”; of record), as applied to Claims 57-67, 69-72 and 74-77, above, and further in view of CAETANO (CA 2706992 A1, Publ. May 27, 2010; hereinafter, “Caetano”; of record).
The teachings of Kolbe, Wöhrle and Fuller, as set forth above, are hereby incorporated. However, the references DO NOT TEACH the incorporation of a sunscreen per the requirements of claim 68:
68. ([…]) The preparation of claim 57, wherein the preparation further comprises one or more of Butylmethoxydibenzoylmethane, Phenylbenzimidazolesulfonic acid, Octocrylene, Ethylhexyl salicylate, Bis-Ethylhexyloxyphenol Methoxyphenyl Triazine, Ethylhexyl methoxycinnamate.
which is well within the purview of the ordinarily skilled artisan.
Caetano, for instance, is directed to:
TOPICAL COSMETIC SKIN LIGHTENING COMPOSITIONS AND METHODS OF USE THEREOF
Abrege/Abstract:
Topical cosmetic compositions are provided that can comprise a Phyllanthus extract, a Bellis extract, and a licorice (Glycyrrhiza) extract. These compositions are used for topical cosmetic applications, particularly to lighten skin. Methods for lightening skin are also provided and can comprise topically administering a therapeutically effective amount of a topical cosmetic composition comprising a Phyllanthus extract, a Bellis extract, and a licorice extract, to skin of a subject in need thereof.
(Caetano, title & abstract). In this regard, teaches the incorporation of a sunscreen, inter alia, “ethylhexyl methoxycinnamate” and “octocrylene”:
[0053] In an embodiment, the present subject matter relates to a topical cosmetic composition, comprising, consisting essentially of, or consisting of a skin-lightening active component comprising, consisting essentially of, or consisting of a Phyllanthus extract, for example, a Phyllanthus embilica extract; a Bellis extract, for example, a Bellis perennis extract; and a licorice extract; at least one sunscreen; and a cosmetically acceptable carrier. The cosmetically acceptable carrier can comprise or consist of one or more cosmetically acceptable excipients.
[…]
[0068] In an additional embodiment, the present topical cosmetic compositions can comprise a sunscreen comprising one or more of methylene bis-benzotriazolyl tetramethylphenol (TINOSORB M available from CIBA), diethylamino hydroxybenzoyl hexyl benzoate, and coated zinc oxide, in an amount of from about 1% to about 20% by weight, from about 2% to about 10% by weight, or of about 5% by weight, based on the total weight of the composition. For example, the present topical cosmetic compositions can comprise a sunscreen comprising methylene bis-benzotriazolyl tetramethylphenol in an amount of from about 1% to about 20% by weight, from about 2% to about 10% by weight, or of about 5% by weight, based on the total weight of the composition
[0069] In a further embodiment, the present topical cosmetic compositions can comprise a sunscreen comprising or consisting of one or more of ethylhexyl methoxycinnamate (available from BASF), isoamyl methoxycinnamate, homosalate ethyl hexyl salicilate, octocrylene, polysilicone-15, butyl methoxydibenzoylmethane, menthyl anthranilate, and ethylhexyl dimethyl PABA, in an amount of from about 1% to about 10%, from about 5% to about 9%, or of about 7.5% by weight, based on the total weight of the composition.
(Caetano, par. [0053] & [0068]-[0069]), which encompasses “Octorcrylene” and “Ethylhexyl methoxycinnamate” of claim 68.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to further incorporate one or more of “Octorcrylene” and/or “Ethylhexyl methoxycinnamate” per Caetano (Caetano, par. [0069]) into the composition of Kolbe per Fuller and Wöhrle (as discussed above). One would have been motivated to do so with a reasonable expectation of success in order to obtain the advantage of a sunscreen (Caetano, par. [0053] & [0068]-[0069]) suitable for skin-lightening composition (Caetano, abstract).
Thus, the prior art renders claims 68 obvious.
Response to Arguments
Applicants’ arguments, filed on June 11, 2026 (hereinafter, referred to as “Remarks”), have been fully considered, but they are not persuasive. Applicant argues: “The specification states that the alkylamidothiazoles in combination with the recited ingredients exhibit a "surprising" increased effectiveness, and supports that statement with comparative tyrosinase-inhibition data obtained in the literature-known L-DOPA / MBTH enzyme assay. (See Specification, page 14).” Remarks, p. 10, par. 2, cont. on p. 11. In response: the instant claims are not commensurate in scope with the alleged unexpected results. According to MPEP § 716.02, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In order to be commensurate in scope, claim 57 should be amended to recite:
57. ([…]) A cosmetic or dermatological preparation, wherein the preparation comprises:
(i) one or more alkylamidothiazoles which comprise N-(4-(2,4-dihydroxyphenyl)thiazol-2-yl)isobutyramide, and
(ii) benzyl benzoate and/or hexyl salicylate[[,]];
wherein the preparation further comprises one or more fragrances; and
wherein (i) and (ii) are present in amounts effective to inhibit hyperpigmentation.
Summary/Conclusion
Claims 57-72 and 74-77 are rejected. No claims are allowed.
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
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