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 .
A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/3/2025 has been entered.
1-10 and 12-14 are pending in this application.
Election & previously indicated allowable subject matter
The requirement to elect a species as set forth in the Office action of 6/28/2024 is maintained and continues to apply in this Office action.
Applicant elected sample #1c of Table 1, which includes decanal, 2,6-dimethyl-5-heptenal, 2,6-nonadienal, as the aldehyde, trimethyl-13-oxabicyclo[10.1.0]trideca-4,8-diene as the ether, epoxide or acetal, and 4-nonanolide as the lactone, in the reply filed on 8/26/2024. Applicant was advised in the Office action of 11/27/2024 that an arthropod control composition comprising the elected species (mixture) of decanal, 2,6-dimethyl-5-heptenal, 2,6-nonadienal, trimethyl-13-oxabicyclo[10.1.0]trideca-4,8-diene, and 4-nonanolide, and method or article that applies or contains said elected species (mixture) was deemed allowable, but at the time, there was no claim that was limited thereto. However, the amendment filed on 4/4/2025 deleted decanal from the claims. Consequently, the previously indication of allowability is withdrawn, because the currently amended claims do not recite a composition that includes decanal.
Next species
The next species examined in the previous Office actions of 11/27/2024 and 4/4/2025 was decanal + pachouli oil. However, decanal was deleted from the claims in the amendment filed on 5/30/2025, which was entered with this RCE.
Therefore, the next species to be examined is another aldehyde with a lactone: 7-hydroxy-3,7-dimethyloctanal and 2-chromenone.
Claims 7 and 8 do not read on the next species, so they are withdrawn from further consideration on the merits.
Claims 1-6, 9-10, and 12-14 will presently be examined to the extent that they read on a composition comprising 7-hydroxy-3,7-dimethyloctanal and 2-chromenone, a method for arthropod control comprising utilizing said composition, and arthropod control article comprising said composition.
Withdrawn grounds of rejection
The ground of rejection under 35 USC 102(a)(1), or in the alternative, under 35 USC 103, over Lasser (US 3,953,378) is withdrawn in view of the amendment filed on 5/30/2025 that deleted decanal from the claims.
The ground of rejection under 35 USC 103 over Lasser (US 3,953,378) in view of Albuquerque et al. and JP H0616515 is withdrawn in view of the amendment filed on 5/230/2025 that deleted decanal from the claims.
The provisional nonstatutory double patenting ground of rejection over copending Application No.18/730,394 is withdrawn in view of claim amendments in said copending application filed on 8/20/2025.
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 1-6, 9-10, and 12-14 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.
Upon further review, several language problems are noted in claim 1.
In the ester perfuming raw material family, the “and” appears to be misplaced because it is not before the last ester family member. See below.
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In the lactone perfuming raw material family, it appears that 6-pentyltetrahydro-2H-pyran-2-one and 6-pentyloxan-2-one are the same compounds. Duplicate listing is confusing as to whether a different compound is intended.
It appears that several compounds are listed in two families. For example,
4-nonaolide (aka γ-nonalactone) is listed as a lactone, but nonalactone is also listed as a ketone. As another example, 2-chromenone is listed as a lactone in claim 1, but it is also listed as a co-ingredient in claim 9. Category designations affect claim scope because the claims require selection from at least two different perfuming raw material families and claim 9 further requires a co-ingredient. In order to address this ambiguous situation and clarify the claims, Applicant is invited to provide Registry numbers for all of the claim-recited compounds; Applicant is in the best position to provide Registry numbers for all the compounds recited in the claims, and doing so would improve clarity of the claimed subject matter.
Dependent claims are included in this ground of rejection because they do not cure the deficiencies of the independent claim.
Claims 1-6, 9-10, and 12-4 are rejected on the basis that they contain an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The instant Markush grouping of “at least two members from at least two perfuming raw material families selected from the acid, alkene, alcohol/phenol, aldehyde, amine, ketone, ester, ether, epoxide, and acetal, lactone, N-hetero aromatic, and complex mixture perfuming raw material families” as set forth in the claims is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
The alternatives are not all members of the same recognized physical or chemical class or the same art-recognized class, because the alternatives represent a plurality of classes with divergent structures as identified by the Markush group members themselves, i.e., acid, alkene, alcohol/phenol, aldehyde, amine, ketone, ester, ether, epoxide, and acetal, lactone, N-hetero aromatic, and complex mixture perfuming raw material families. Furthermore, the alternatives do not share a substantial structural feature because they belong to divergent class of compounds with varying structures.
Therefore, the claims set forth an improper Markush grouping because the alternatives are not all members of the same recognized physical or chemical class or the same art-recognized class, nor do the alternative chemical compounds share both a substantial structural feature and a common use that flows from the substantial structural feature.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Applicant’s arguments filed on 5/30/2025 have been given due consideration, but they were deemed unpersuasive for the following reasons.
As set forth above, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Applicant’s argument appears to be that “perfuming raw material families” is an art-recognized class. This argument is unpersuasive for two reasons.
First, the very structure of Applicant’s claims is evidence that the different families belong to different chemical perfuming families or classes – Applicant recites in claim 1 the following ten chemical classes of perfuming raw materials:
(A) acids,
(B) alkenes,
(C) alcohols and phenols,
(D) aldehydes,
(E) amines,
(F) esters,
(G) ethers, epoxides, acetals,
(H) lactones,
(I) N-hetero aromatics, and
(J) complex mixtures.
By comparison, improper Markush Example D of MPEP 2117 IV recites:
(a) inorganic salts,
(b) organic salts,
(c) amides,
(d) nitriles,
(e) phenols,
(f) amines, and
(g) heterocyclic.
All of Applicant’s compounds of (A) to (J) may very well be “perfuming raw material families,” but the improper Markush Example D compounds of (a) to (g) are also all “herbicides.” Collectively classifying all of the compounds of (A) to (J) as a supposedly single art-recognized class, i.e., “perfuming raw material families,” is defective on its face under this ground of rejection, because Applicant’s ten families are separately recognized, even by Applicant, as different chemical classes of perfuming raw materials.
Applicant argues that Example D of MPEP 2117 IV does not apply because they recite individual herbicides having “vastly different chemical structures for combination with another herbicide.” The Examiner cannot agree. Applicant’s claims are broader than said Example D, and Applicant’s claimed subject matter readily encompasses similar claim structure. For example, Applicant’s claims could be rewritten in part in the following manner:
An arthropod control composition comprising an acid such as dodecanoic acid and at least one other compound selected from the group consisting of:
(A) alkene, e.g., beta-ocimene
(B) alcohol or phenol, e.g., 1-decanol
(C) aldehyde, e.g., 2-nonenal
(D) amine, e.g., 3-methylbutylamine
(E) ketone, e.g., 2-hexylidene-1-cyclopentanone
(F) ester, e.g., allyl (E)-3-phenyl-2-propenoate
(G) ether, epoxide, acetal, e.g., (4Z,8E)-1,5,8-trimethyl-13-oxabicyclo[10.1.0]trideca-4,8-diene
(H) lactone, e.g., 4-nonanolide
(I) N-hetero aromatics, e.g., 2-isobutylquinoline, and
(J) Complex mixture, e.g., lemongrass oil; or
an arthropod control composition comprising an alkene such as beta-ocimene and at least one other member selected from the group consisting of
(B) alcohol or phenol, e.g., 1-decanol
(C) aldehyde, e.g., 2-nonenal
(D) amine, e.g., 3-methylbutylamine
(E) ketone, e.g., 2-hexylidene-1-cyclopentanone
(F) ester, e.g., allyl (E)-3-phenyl-2-propenoate
(G) ether, epoxide, acetal, e.g., (4Z,8E)-1,5,8-trimethyl-13-oxabicyclo[10.1.0]trideca-4,8-diene
(H) lactone, e.g., 4-nonanolide
(I) N-hetero aromatics, e.g., 2-isobutylquinoline, and
(J) Complex mixture, e.g., lemongrass oil; or
an arthropod control composition comprising an acid such as dodecanoic acid and alkene such as beta-ocimene, and at least one other member selected from the group consisting of
(B) alcohol or phenol, e.g., 1-decanol
(C) aldehyde, e.g., 2-nonenal
(D) amine, e.g., 3-methylbutylamine
(E) ketone, e.g., 2-hexylidene-1-cyclopentanone
(F) ester, e.g., allyl (E)-3-phenyl-2-propenoate
(G) ether, epoxide, acetal, e.g., (4Z,8E)-1,5,8-trimethyl-13-oxabicyclo[10.1.0]trideca-4,8-diene
(H) lactone, e.g., 4-nonanolide
(I) N-hetero aromatics, e.g., 2-isobutylquinoline,
(J) Complex mixture, e.g., lemongrass oil; or
….
The instant claims are far broader than this limited sample analysis, which clearly and analogously shows (analogous to Example D of MPEP 2117 IV) the improper Markush grouping of alternatives.
Additionally, as previously stated in the Office action of 4/4/2025 at pages 5-6, the supposed “art-recognized class” must be a class wherein there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention. MPEP 2117 II.A. The context of the claimed invention is an arthropod control composition, method, or article. Applicant ignores this fact and instead argues that the arthropod control aspect is “immaterial to the claimed perfuming raw material families of the Markush group” (emphasis in the original).
The Examiner does not agree. As shown above, “perfuming raw material families” are not art-recognized because even Applicant implicitly acknowledges that they actually belong to different art-recognized perfuming raw material families, which are: acid; alkene; alcohol/phenol; aldehyde; amine; ketone; ester; ether, epoxide and acetal; lactone; N-hetero aromatic; and complex mixture. Moreover, in the context of an arthropod control composition, there is no expectation that all the chemically distinct members of claimed perfuming materials will behave in the same way. To the contrary, for example beta-ocimene (alkene) is expected to attract a specific insect (US 2013/0266535, claims 1 and 5) and dodecanoic acid (acid) is expected to attract an insect (US 2014/0271536, claim 1), but lemongrass oil (“complex mixture”) is expected to repel an insect (US 2007/0166342, claim 1). Thus, all the alternatives set forth in the claims will not behave in the same way in the context of the claimed invention, and each member cannot be substituted one for the other with the expectation that the same intended result would be achieved.
Furthermore, the currently claimed Markush grouping is improper because its members do not share a common use. As shown above, some compounds attract insects, whereas others repel insects. This is not a common use because a skilled artisan who must repel insects cannot use an insect attractant. Thus, the Markush group members do not share a common use in the context of arthropod control.
For these reasons, Applicant’s arguments are found unpersuasive, and this ground of rejection is applied again.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
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.
Claims 1-6, 9, and 12-4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Holland et al. (US 2018/0334637; hereinafter, Holland).
Holland discloses a fragrance mixture (Fragrance Example 3) that contains, inter alia, 7.5 wt% hydroxycitronellal, 0.5 wt% coumarin, and 0.05 wt% methyl anthranilate. See Table 8 on page 32. Another name for hydroxycitronellal is 7-hydroxy-3,7-dimethyloctanal; and another name for coumarin is 2-chromenone. Holland’s Fragrance Example 3 also contains, inter alia, benzyl acetate, α-terpineol, cinnamic alcohol, citronellyl acetate, dihydromyrcenol, , linalyl acetate, methyl ionone, rhodinol, and dipropylene glycol.
Thus, Holland discloses a composition comprising the species under examination: Holland discloses an aldehyde, a lactone, and also a co-ingredient, in accordance with Applicant’s claims and species under examination.
Although Holland does not explicitly disclose that her fragrance composition is an arthropod, insect, or arachnid control composition, it is the Examiner’s position that such property would have been necessarily present in Holland’s composition because it contains the same 7-hydroxy-3,7-dimethyloctanal (hydroxycitronellal), 2-chromenone (coumarin), and methyl anthranilate, which is a “arthropod control co-ingredient[s]” of instant claim 9.
Additionally, Traynor et al. (US 2017/0216164; hereinafter, Traynor) disclose arachnid/insect repellent property of many plant essential oil components, including hydroxycitronellal, i.e., 7-hydroxy-3,7-dimethyl-octanal, methyl anthranilate, benzyl acetate, α-terpineol, cinnamic alcohol, citronellyl acetate, dihydromyrcenol, dipropylene glycol, linalyl acetate, methyl ionone, and rhodinol (Traynor’s claims 1, 11, 14), all of which are present in Holland’s Fragrance Example 3. Traynor is permissible extrinsic evidence to show that the characteristic not explicitly disclosed in an anticipatory reference is inherent. MPEP 2131.01.
Article claims 12-14 are anticipated by Holland’s Fragrance Example 3, compositions containing said Fragrance Example 3 in Table 18(a) on page 37, and body sprays of Table 20 and body lotions of Table 21 on page 39, which contain said Fragrance Example 3. See also the consumer product of claim 18.
In the alternative, the composition and article of the instant claims would have been obvious to the ordinary skilled artisan because Holland discloses the same composition and article, which would necessarily obtain the same result of arthropod control because the same 7-hydroxy-3,7-dimethyloctanal, 2-chromenone, and methyl anthranilate are present in Holland’s compositions and articles.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been disclosed or suggested by the teachings of the cited reference.
Claims 1-6, 9-10, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Holland (US 2018/0334637) in view of Traynor (US 2017/0216164) and Bessette et al. (US 2003/0194454).
Holland discloses a fragrance mixture (Fragrance Example 3) that contains, inter alia, 7.5 wt% hydroxycitronellal, 0.5 wt% coumarin, and 0.05 wt% methyl anthranilate. See Table 8 on page 32. Another name for hydroxycitronellal is 7-hydroxy-3,7-dimethyloctanal; and another name for coumarin is 2-chromenone. Holland further discloses compositions containing said Fragrance Example 3 in Table 18(a) on page 37, and body sprays of Table 20 and body lotions of Table 21 on page 39, which contain said Fragrance Example 3. See also the consumer product of Holland’s claim 18. It is further noted that Holland’s Fragrance Example 3 also contains, inter alia, benzyl acetate, α-terpineol, cinnamic alcohol, citronellyl acetate, dihydromyrcenol, , linalyl acetate, methyl ionone, rhodinol, and dipropylene glycol (Table 8, page 32).
Traynor discloses arachnid/insect repellent property of many plant essential oil components, including hydroxycitronellal, i.e., 7-hydroxy-3,7-dimethyl-octanal, methyl anthranilate, benzyl acetate, α-terpineol, cinnamic alcohol, citronellyl acetate, dihydromyrcenol, dipropylene glycol, linalyl acetate, methyl ionone, and rhodinol (Traynor’s claims 1, 11, 14).
Bessette discloses plant essential oil components, including hydroxycitronellal, i.e., 7-hydroxy-3,7-dimethyl-octanal, methyl anthranilate, α-terpineol, benzyl acetate, cinnamic alcohol, citronellyl acetate, dihydromyrcenol, dipropylene glycol, linalyl acetate, methyl ionone, and rhodinol (paragraph 60), which are pesticidal by acting on the pest nervous system, inhibiting enzymes, acting as octopamine agonist (paragraphs 63, 65). Pests include arthropods such as insects and spiders (paragraph 63).
Although Holland does not explicitly disclose that her fragrance composition is an arthropod, insect, or arachnid control composition, it is the Examiner’s position that such property would have been present in Holland’s composition because it contains the same 7-hydroxy-3,7-dimethyloctanal (hydroxycitronellal), 2-chromenone (coumarin), and methyl anthranilate which is a “arthropod control co-ingredient[s]” of instant claim 9.
Furthermore, Holland’s Fragrance Example 3 contains many ingredients that are known to possess insect control properties, such as for example 7-hydroxy-3,7-dimethyloctanal (hydroxycitronellal), methyl anthranilate, benzyl acetate, α-terpineol, cinnamic alcohol, citronellyl acetate, dihydromyrcenol, , linalyl acetate, methyl ionone, rhodinol, and dipropylene glycol, as evidenced by Traynor and Bessette.
The method of claim 10 requires “bringing an insect into direct contact or in contact with vapors of a composition ….” Holland’s composition is a fragrance composition, which can be used as a body spray, body splash (paragraph 93; Table 20; claim 12), body lotion (Table 21), fabric care product, air care product, or home care product (claim 14). Such uses and products would obviously bring insects into direct contact or in contact with vapors of the composition because insects are attracted to human bodies, fabric, and are present in the air and in the home.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, because every element of the invention and the claimed invention as a whole have been fairly disclosed or suggested by the teachings of the cited references.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-11, 13-15, and 18-20 of copending Application No. 17/599,997 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The claims of the reference application are directed to an arthropod control composition, method, and articles, wherein the composition can contain 2 or more of compounds such as, inter alia, coumarin, 7-hydroxy-3,7-dimethyloctanal, gamma-nonalactone (i.e., 4-nonanolide), octanoic acid, beta-ocimene, 1-decanol, decanal, 2-isobutylquinoline, and patchouli oil. See the cited reference application claims, claims 5 and 8 in particular.
Therefore, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the invention set forth in the claims of each of the three reference applications because claims of each reference application encompass the use of the same compounds for arthropod control as in the instant application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of this ground of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that this ground of rejection is maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Claims 1-3, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the following reference applications:
(1) claims 1-15 of copending Application No. 18/838,149,
(2) claims 1-13 of copending Application No. 18/730,196.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The claims of two reference applications encompass an arthropod control composition, method, and articles, wherein the composition can contain 2 or more of compounds such as, inter alia, coumarin (i.e., 2-chromenone), decanoic acid, nonanoic acid, lemongrass oil, and gamma-nonalactone (another name for 4-nonanolide). See claims of all three reference application; see in particular claim 9 in 18/838,149 and claim 7 in 18/730,196.
Therefore, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the invention set forth in the claims of each of the three reference applications because claims of each reference application encompass the use of the same compounds for arthropod control as in the instant application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of these grounds of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that these two grounds of rejection are maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Claims 1-4, 6, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15, 18, 21-24 of copending Application No. 18/067,164 (reference application) in view of Albuquerque et al., JP H0616515, and Lasser. Although the claims at issue are not identical, they are not patentably distinct from each other because of the full reasons of record set forth in the Office action of 4/4/2025, pages 14-15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The claims of the reference application are directed to a method to inhibit, reduce, or suppress perception of malodor in a subject or method to inhibit at least one olfactory receptor in a subject, wherein a subject is contacted with 2 or more compounds, including, inter alia, 7-hydroxy-3,7-dimethyloctanal, trimethyl-13-oxabicyclo[10.1.0]trideca-4,8-diene, isobutylquinoline, patchouli oil. See the cited reference application claims; claims 1, 3, and 11 in particular.
Teachings of Albuquerque et al., JP H0616515, and Lasser were fully discussed previously in this Office action, and the discussion there is incorporated herein by reference. In sum, Albuquerque et al. and JP H0616515 establish that patchouli oil is known to possess insecticidal, insect repellent, and arachnid repellent properties; and Lasser establishes that perfume ingredients find an extremely broad utilization such as in cosmetic preparations, soaps, and detergents, which can also incorporate insecticides or bactericides.
The ordinary skilled artisan would have found it obvious that the patchouli oil-containing composition of the reference application claims can be used to also control arthropods and arachnids because patchouli oil possesses those properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of this ground of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that this ground of rejection is maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Claims 1-4, 6, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 20 of copending Application No. 18/247,402 (reference application) in view of Albuquerque et al., JP H0616515, and Lasser. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The claims of the reference application are directed to a sweat malodor inhibiting composition, antiperspirant or deodorant composition, and method to inhibit, reduce, or suppress perception of a sweat malodor in a subject or method to inhibit at least one olfactory receptor in a subject, wherein the composition can contain, or a subject is contacted with, 2 or more compounds, including, inter alia, 4-nonanolide, patchouli oil, (2E,6Z)-2,6-nonadienal, 2-chromenone, and decanal. See the cited reference application claims, claims 1, 15, and 20 in particular.
Teachings of Albuquerque et al., JP H0616515, and Lasser were fully discussed previously in this Office action, and the discussion there is incorporated herein by reference. In sum, Albuquerque et al. and JP H0616515 establish that patchouli oil is known to possess insecticidal, insect repellent, and arachnid repellent properties; and Lasser establishes that perfume ingredients find an extremely broad utilization such as in cosmetic preparations, soaps, and detergents, which can also incorporate insecticides or bactericides.
The ordinary skilled artisan would have found it obvious that the patchouli oil-containing composition of the reference application claims can be used to also control arthropods and arachnids because patchouli oil possesses those properties. Contacting the subject in the form of various personal care or body care article would have been obvious, at the very least from reference application 20, which is directed to an antiperspirant or deodorant composition. Therefore, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the invention set forth in the claims of the reference application because the reference application claims read on the same compounds as in the instant application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of this ground of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that this ground of rejection is maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Claims 1-6, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of copending Application No. 18/258,084 (reference application) in view of Albuquerque et al., JP H0616515, and Lasser. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The claims of the reference application are directed to a perfuming composition, perfumed consumer product, and method of conferring, improving, or modifying fragrance intensity or odor properties, wherein the composition, product, and method can utilize 2 or more compounds, including, inter alia, 7-hydroxy,3,7-dimethyloctanal,
patchouli oil, methyl 2-aminobenzoate, and decanal. See the cited reference application claims, claims 6, 7, and 17 in particular.
Teachings of Albuquerque et al., JP H0616515, and Lasser were fully discussed previously in this Office action, and the discussion there is incorporated herein by reference. In sum, Albuquerque et al. and JP H0616515 establish that patchouli oil is known to possess insecticidal, insect repellent, and arachnid repellent properties; and Lasser establishes that perfume ingredients find an extremely broad utilization such as in cosmetic preparations, soaps, and detergents, which can also incorporate insecticides or bactericides.
The ordinary skilled artisan would have found it obvious that the patchouli oil-containing composition of the reference application claims can be used to also control arthropods and arachnids because patchouli oil possesses those properties. Formulation as a personal care or body care article would have been obvious. Therefore, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the invention set forth in the claims of the reference application because the reference application claims read on the same compounds as in the instant application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of this ground of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that this ground of rejection is maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Claims 1-6, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-22 of copending Application No. 18/260,297 (reference application) in view of Albuquerque et al., JP H0616515, and Lasser. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The claims of the reference application are directed to a perfuming composition, perfumed consumer product, method for conferring, improving, or modifying fragrance intensity or odor properties wherein 2 or more are utilized, including, inter alia, 7-hydroxy-3,7-dimethyloctanal, patchouli oil, methyl 2-aminobenzoate, and decanal. See the cited reference application claims, claims 1-2 in particular.
Teachings of Albuquerque et al., JP H0616515, and Lasser were fully discussed previously in this Office action, and the discussion there is incorporated herein by reference. In sum, Albuquerque et al. and JP H0616515 establish that patchouli oil is known to possess insecticidal, insect repellent, and arachnid repellent properties; and Lasser establishes that perfume ingredients find an extremely broad utilization such as in cosmetic preparations, soaps, and detergents, which can also incorporate insecticides or bactericides.
The ordinary skilled artisan would have found it obvious that the patchouli oil-containing composition of the reference application claims can be used to also control arthropods and arachnids because patchouli oil possesses those properties. Therefore, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the invention set forth in the claims of the reference application because the reference application claims read on the same compounds as in the instant application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of this ground of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that this ground of rejection is maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Claims 1-6, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14, 16-19 of copending Application No. 18/562,253 (reference application) in view of Albuquerque et al., JP H0616515, and Lasser. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The claims of the reference application are directed to a composition, packaging material, consumer product, and method for limiting, reducing, or eliminating perception of malodor associated with plastic materials, wherein the plastic can be treated with a composition comprising 2 or more compounds, including, inter alia, methyl 2-aminobenzoate, 2-chromenone, 2,6-dimethyl-5-heptenal, patchouli oil, (2E,6Z)-2,6-nonadienal. See the cited reference application claims, claims 3, 8 in particular.
Teachings of Albuquerque et al., JP H0616515, and Lasser were fully discussed previously in this Office action, and the discussion there is incorporated herein by reference. In sum, Albuquerque et al. and JP H0616515 establish that patchouli oil is known to possess insecticidal, insect repellent, and arachnid repellent properties; and Lasser establishes that perfume ingredients find an extremely broad utilization such as in cosmetic preparations, soaps, and detergents, which can also incorporate insecticides or bactericides.
The ordinary skilled artisan would have found it obvious that the patchouli oil-containing composition of the reference application claims can be used to also control arthropods and arachnids because patchouli oil possesses those properties. Delivering the composition in the form of various personal care or body care articles would have been obvious. Therefore, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the invention set forth in the claims of the reference application because the reference application claims read on the same compounds as in the instant application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of this ground of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that this ground of rejection is maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Claims 1-6, 9-10, and 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 8, 13, 18, 20, 29, 39, 43, 45, 47, 49, 51, 53, 55, 58-59, 61-62 of copending Application No. 17/799,856 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The claims of the reference application are directed to an antimicrobial composition that can contain 2 or more perfuming ingredients, which include, inter alia, 4-nonanolide and (2E,6Z)-2,6-nonadienal, methyl 2-aminobenzoate, (E)- or (Z)-3,7-dimethyl-2,6-octadien-1-ol. See the cited reference application claims, claims 1, 22, 45, 47, 49, 51 in particular.
Thus, the claims of the reference application encompass compositions, articles, and methods wherein the same perfuming ingredients are applied or used. Any property possessed by the claims of the instant application must also be necessarily present and obtained in the claimed composition, articles and methods of the reference application because the same compounds are utilized. The instant claims would have been obvious to the ordinary skilled artisan based on the claims of the reference application. Therefore, the ordinary skilled artisan would have recognized that the instant claimed invention is an obvious variation of the invention set forth in the claims of the reference application because the reference application claims read on the same compounds as in the instant application claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
In the response filed on 5/30/2025, Applicant requests reconsideration of this ground of rejection “in view of the present response,” which includes the cancellation of the previously examined species component, decanal. Applicant is advised that this ground of rejection is maintained because the reference application claims still read on the claims of the instant application as discussed herein.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JOHN PAK whose telephone number is (571)272-0620. The Examiner can normally be reached on Monday to Friday from 8:30 AM to 5 PM.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's SPE, Fereydoun Sajjadi, can be reached on (571)272-3311. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JOHN PAK/Primary Examiner, Art Unit 1699