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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/24/2025, has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/22/2025, is in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS documents were considered. A signed copy of Form PTO-1449 is enclosed herewith.
Withdrawn Rejections:
The rejection of claims 32-37, 39 and 45 under: 1) 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is overcome by the Applicants’ amendments and is hereby withdrawn. Specifically, Applicants amended claims 32, 36 and 45, so that compounds are no longer incorporated by reference to tables in the specification.
The rejection of claims 26-30, 32-37, 39 and 41-45 under 35 U.S.C. 103 as being unpatentable over Holland of record (U.S. Pub. No. 20160362630), is overcome by the Applicants’ amendments and is hereby withdrawn. Specifically, Applicants amended independent claims 26, 32, and 41, to require at least one high volatile fragrance material in an amount of greater than 34 wt%.
Status of the Claims
Claims 26-45 are pending.
Applicants’ arguments filed 11/24/2025, have been fully considered. Rejections and/or objections not reiterated from previous Office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Applicants’ amendments, filed on 11/24/2025, have each been entered into the record. Applicants have amended claims 26, 32, 36-37, 41 and 45. Claims 38 and 40 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected invention. Claim 31 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to non-elected species of non-odorous fragrance modulator. Therefore, claims 26-30, 32-37, 39 and 41-45 are subject of the Office Action below.
Claim Rejections - 35 USC § 112
New Grounds of Rejection Necessitated by Applicants’ Amendments
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 29, 35 and 42 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.
Each of claims 29, 35 and 42 recites at least one high volatile material in an amount “from about 31 wt% to about 60 wt%” in lines 1- 2. There is insufficient antecedent basis for this limitation in the claim. Claims 29, 35 and 42 lack antecedent basis because claims 26, 32, and 41 from which claims 29, 35 and 42 respectively depend, require at least one high volatile material in an amount of greater than 34 wt%.
Claim Rejections - 35 USC § 112 – New Matter
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 32-37, 39 and 45 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 33-37 and 39 depend from claim 32 and are therefore, also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the reasons set forth below.
MPEP 2163 states:
“An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention….one must define a compound by ‘whatever characteristics sufficiently distinguish it’. A lack of adequate written description issue also arises if the knowledge and level of skill in the art would not permit one skilled in the art to immediately envisage the product claimed from the disclosed process”.
. Applicants have amended claims 32, 36 and 45 to introduced the limitation:
a) “wherein the high volatile fragrance material is selected from a citrus- type note, a pepper-type note, a cumin-type note, a ginger-type note, or a lavender-type note, individually or in combination” (claims 32 and 45); and
b) “wherein the low volatile fragrance material is selected from a woody-type note, a cedarwood-type note, a sandalwood- type note, or an amber-type note, individually or in combination” (claim 36).
The specification (see Table 1A-1B and Table 3A-3B) provides listing of specific compounds that fall within the definition of the low volatile fragrance material (Table 1a-1B) and high volatile fragrance material (Table 3A-3B). However, a review of the specification and claims as originally filed, to provide adequate support for a low volatile fragrance material and a high volatile fragrance material, selected from the list disclosed above.
Applicants’ response filed on 11/24/2025, has introduced new matter. Applicants have amended claims 32, 36 and 45 to newly introduce a particular low volatile fragrance material and high volatile fragrance material that is not described in the specification in such a way as to reasonably convey to one skilled in the art that the Applicants, at the time of the instant application, have possession of low volatile fragrance material and high volatile fragrance material selected from the list disclosed above. In particular, a review of the specification and claims as originally filed, fails to provide adequate support for low volatile fragrance material and high volatile fragrance material selected from the list disclosed above, recited in instant claims 32, 36 and 45.
New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP § 608.04(a) to § 608.04(c). Accordingly, the claim is considered to lack sufficient written description and are properly rejected under 35 U.S.C. 112(pre-AIA ), first paragraph.
Claim Rejections - 35 USC § 103
New Grounds of Rejection Necessitated by Applicants’ Amendments
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 26-30 and 41-44 are rejected under 35 U.S.C. 103 as being unpatentable over Holland of record (U.S. Pub. No. 20160362630) in view of Bonnet et al (hereinafter “Bonnet”, U.S. Pub. No. 20150164764, published 06/18/2015).
Applicants’ invention is directed to a fragrance composition. For example, independent claim 26 recites: “A composition comprising:
a fragrance component present in an amount of from about 0.04 wt% to about 30 wt%, relative to the total weight of the composition, and wherein the fragrance component comprises:
at least one low volatile fragrance material having a vapor pressure less than 0.001 Torr (0.000133 kPa) at 25 °C present in an amount of from about 1 wt% to about 30 wt%, relative to the total weight of the fragrance component;
at least one moderate volatile fragrance material having a vapor pressure in the range of 0.1 Torr to 0.001 Torr (0.0133 kPa to 0.000133 kPa) at 25 °C present in an amount of from about 25 wt% to about 65 wt%, relative to the total weight of the fragrance component; and
at least one high volatile fragrance material having a vapor pressure greater than 0.1 Torr (0.0133 kPa) at 25 °C present in an amount of greater than 34 wt % relative to the total weight of the fragrance component; and
at least one substantially non-odorous fragrance modulator present in the amount of from about 0.1 wt% to about 20 wt%, relative to the total weight of the composition.”
Independent claim 41 is similar to claim 26, however, claim 41 differs slightly from claim 26, in that claim 41 requires that the at least one moderate volatile fragrance material is present in an amount of from about 30 wt% to about 70 wt% of the fragrance component; and
Similar to claims 26-30 and 41-44, Holland (see reference claim 1), teaches analogous fragrance composition. Please see Table below for side-by-side comparison of instant claim 26 and claim 1 of Holland.
Applicants’ claim 26
Holland’s claim 1
PNG
media_image1.png
405
654
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Greyscale
PNG
media_image2.png
925
680
media_image2.png
Greyscale
The claimed “from about 0.04 wt% to about 30 wt% of a fragrance component, is anticipated by Holland, who teaches “from about 0.04 wt% to about 30 wt% of a fragrance component” (see discussions above).
The claimed “at least one low volatile fragrance material in an amount of from about 1 wt% to about 30 wt% of the fragrance component and having a vapor pressure of less than 0.001 Torr at 25 oC”, is anticipated by Holland, because Holland teaches at least one low volatile fragrance material in an amount of from about 10 wt% to about 30 wt% of the fragrance component and having a vapor pressure of less than 0.001 Torr at 25 oC (see discussions above). The “from about 10 wt% to about 30 wt% of the fragrance component” disclosed by Holland, is within the claimed “from about 1 wt% to about 30 wt% of the fragrance component”. A specific example in the prior art which is within a claimed range anticipates the range. Please MPEP § 2131.03.
The claimed “at least one moderate volatile fragrance material in an amount of from about 25 wt% to about 65 wt% of the fragrance component and having a vapor pressure of from 0.001-0.01 Torr at 25 oC”, overlaps or lies inside the range disclosed by Holland, because Holland teaches at least one moderate volatile fragrance material in an amount of from about 40 wt% to about 80 wt% of the fragrance component and having a vapor pressure of from 0.001-0.01 Torr at 25 oC (see discussions above).
The claimed “at least one substantially non-odorous fragrance modulator in an amount of from about 0.1 wt% to about 20 wt% of the composition”, is anticipated by Holland, who teaches “at least one substantially non-odorous fragrance modulator in an amount of from about 0.1 wt% to about 20 wt% of the composition” disclosed by Holland (see discussions above). The at least one substantially non-odorous fragrance modulator is selected from the group consisting of methyl glucoside polyol, ethyl glucoside polyol, propyl glucoside polyol or mixtures thereof (see reference claim 12)
A prima facie case of obviousness exists in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (see MPEP § 2144.05). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP § 2144.05). In the instant case, because the claimed component dosage ranges, not only overlap or lie inside ranges disclosed by the prior art, but are also merely close to the ranges disclosed by the prior art (see discussions above), a prima facie case of obviousness exists.
Furthermore, MPEP § 2144.05(II)(B), states that “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
It is noted that no criticality has been demonstrated in the specification with regard to the claimed composition component dosage ranges.
Holland differs from claims 26-30 and 41-44, only insofar as Holland only discloses the at least one high volatile fragrance material in an amount of about 30 wt%, rather than in an amount greater than 34 wt%.
However, the claimed invention would have been obvious over Holland, because at the time of the instant invention, it was known in the art that a fragrance composition can contain from about 0.1-40 wt% of high volatile fragrance material. For example, Bonnet (see ¶s 0002-0003), discloses that a fragrance composition can contain from about 0.1-40 wt% of high volatile fragrance material.
The claimed “at least one high volatile fragrance material in an amount of greater than 34 wt%”, is a result effective variable that would have been routinely determined and optimized in the pharmaceutical art, following the guidelines set forth in the prior art disclosure (see discussions above). Furthermore, MPEP § 2144.05(II)(B), states that “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.”
It is noted that no criticality has been demonstrated in the specification with regard to the claimed amount for the high volatile fragrance material.
Furthermore, the claimed “at least one high volatile fragrance material in an amount of greater than 34 wt% of the fragrance component and having a vapor pressure of greater than 0.1 Torr at 25 oC”, is merely close to the range disclosed by Holland, because Holland teaches at least one high volatile fragrance material in an amount of from about 1 wt% to about 30 wt% of the fragrance component and having a vapor pressure of greater than 0.1 Torr at 25 oC (see discussions above).
A prima facie case of obviousness exists in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (see MPEP § 2144.05). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP § 2144.05). In the instant case, because the claimed component dosage ranges, not only overlap or lie inside ranges disclosed by the prior art, but are also merely close to the ranges disclosed by the prior art (see discussions above), a prima facie case of obviousness exists.
Therefore, a person skilled in the art would have found it obvious to arrive at the claimed invention, following the guidance provided in the Holland and Bonnet references, with a reasonable expectation that the composition would exhibit utility as a perfume (see abstracts of Holland).
Obviousness requires only a reasonable expectation of success, not complete confidence in a given outcome; "at least some degree of predictability" is all that is required. M.P.E.P. § 2143.02.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited references.
Response to the Applicant’s Arguments
Applicants reiterated the same arguments against the Holland reference on the grounds that the objective of Holland invention is diamond construct (defined in terms of low volatility, intermediate volatility and high volatility), which is different from traditional construct (defined in terms of base, heart (or middle) and top notes). Holland teaches away from any attempt to use its teaching to construct a perfume composition that does not have a diamond construct. Please see pages 15-18 of Remarks.
Response:
Applicants’ arguments have been fully considered but they are not found to be persuasive. This is because in supporting a rejection under 35 U.S.C. 103, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. Please see MPEP §2144(iv), under the title “RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE”.
Furthermore, each of the limitations of the claimed invention has been addressed by Holland and Bonnet (see discussions above). Applicants have not properly addressed the specific grounds of rejections as discussed in the previous Office action setting and reiterated in the discussions above.
Nonstatutory Double Patenting Rejections-Maintained
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 rejection of claims 26-30, 32-37, 39 and 41-45 on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. patent Nos: 9,814,661; 10,138,441; 10,336,966; and 10,501,706, is maintained for the reasons of record set forth in the Office action.
The provisional rejection of claims 26-30, 32-37, 39 and 41-45 on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. patent application Nos: 16/967,920; and 16/548,385, is maintained for the reasons of record set forth in the Office action.
Response to the Applicant’s Arguments
Applicants have not properly addressed the specific grounds of rejections as discussed in the previous Office action setting. Applicants defer responding until an indication of allowable claims. Please see page 14 of Remarks.
Response:
Applicants’ comments are acknowledged. However, the rejections will be maintained until a terminal disclaimer is filed or the claims are amended to obviate the rejections.
Conclusion
No claim is allowable.
If Applicants should amend the claims, a complete and responsive reply will clearly identify where support can be found in the disclosure for each amendment. Applicants should point to the page and line numbers of the application corresponding to each amendment, and provide any statements that might help to identify support for the claimed invention (e.g., if the amendment is not supported in ipsis verbis, clarification on the record may be helpful). Should the Applicants present new claims, Applicants should clearly identify where support can be found in the disclosure.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/ Supervisory Patent Examiner, Art Unit 1629