DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/09/2025 has been entered.
AIA Status of the Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, filed 9/09/2025, have been fully considered.
In the previous Action mailed on 8/13/2025, claims 1-3, 10, 15 and 19-20 – drawn to an arthropod control composition comprising the following compound of formula (I):
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(i.e., 2,5-dimethyl-2,3-dihydro-1H-inden-2yl)methanol, aka 2,5-dimethyl-2-indanemethanol) in an amount of from 0.02 to 4 wt.%, more specifically 0.2 to 2.5 wt.%, and even more specifically 0.02 to 1 wt.%, based on the total weight of the composition – were rejected under 35 U.S.C. 103(a) as being unpatentable over Winter et al (EP 1022265 (2007); of record), and claim 18 was objected to as depending from a rejected base claim without further search.
Applicant first traverses the objection of claim 18, arguing that “[c]laim 18 is of proper dependent form because it limits the claim from which it depends” and, “[t]hus, this claim should not be objected to” (Applicant Arguments, Page 11). Applicant further argues “the additionally searched species was elected by the Office and not Applicant” and, as such “at most, claim 18 should merely be withdrawn if the Office deems necessary” (Applicant Arguments, Page 11).
The argument is not found persuasive. In Applicant’s Response to Election/Restriction filed 5/15/2024, Applicant elected, as a single arthropod control composition, a composition comprising, as a compound of formula (I), 2,3-dihydro-1H-indene-2-carbonitrile (aka 2-cyanoindane) having the following structure:
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which reads on claims 1-3, 10, 15 and 18-20.
Since Applicant’s elected species reads on claim 18, the claim is properly not withdrawn.
And since, as previously indicated, the elected arthropod control composition comprising 2,3-dihydro-1H-indene-2-carbonitrile (aka 2-cyanoindane) in an amount of from 0.01 to 4 wt.% based on the total weight of the composition, and optionally comprising at least one arthropod control co-ingredient, has been searched and is determined to be free of the art and non-obvious (see Office Action dated 3/11/2025, Paragraphs 15-16, and Office Action dated 6/17/2025, Paragraph 8), the search was expanded as called for under current Office Markush practice – a compound by compound search – to include a single additional species (M.P.E.P. § 803.02). That species, as discussed above, is an arthropod control composition comprising 2,5-dimethyl-2,3-dihydro-1H-inden-2yl)methanol, which reads on claims 1-3, 10, 15 and 19-20.
Since the expanded species does not read on claim 18, that claim has been objected to as depending from a rejected base claim and the search has not been further extended to the remaining non-elected species within claim 18. As discussed in M.P.E.P. § 803.02(III)(A): “[t]he prior art search will not be extended unnecessarily to cover all nonelected species, and need not be extended beyond a proper Markush grouping”.
Applicant next traverses the rejection of claims under 35 U.S.C. 103(a) as being unpatentable over Winter et al (EP 1022265 (2007); of record), which teaches compositions “in the field of perfumery” (such as “perfumes, eau de toilette or aftershave lotions, as well as… soaps, shower or bath gels” and so on (Paragraph 0011)) comprising alcohols of formula (I) (Abstract), specifically wherein the alcohol is 2,5-dimethyl-2-indanemethanol (see, e.g., Paragraphs 0008, 0010 and 0020 (Example 1)), explicitly providing embodiments comprising 2,5-dimethyl-2-indanemethanol in an amount of 37.5% by weight (Paragraphs 0043-0044, Example 5), 10% by weight (Paragraphs 0045-0046, Example 6), 10.4% by weight (Paragraphs 0047-0048, Example 7), and 8.51% by weight (Paragraphs 0049-0050, Example 8). Yet, as further taught by Winter, “typical concentrations of the order of 5 to 10% by weight, or even 20% or more by weight, of the compounds (I) of the invention may be cited, relative to the weight of the composition in which it is incorporated”, although “[m]uch lower concentrations than these may be used when the compounds are directly applied in the perfuming of the various consumer products mentioned” (Paragraph 0016).
As argued by Applicant, “the ranges disclosed in Winter do not read on the claimed ranges [i.e., 0.02 to 4 wt.%, more specifically 0.2 to 2.5 wt.%, and even more specifically 0.02 to 1 wt.%] based on the appropriate MPEP standards” (Applicant Arguments, Page 12). In particular, Applicant points to MPEP 2144.05(I) as follows:
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As argued by Applicant, “[i]t has been found that a range of ‘not substantially less than 13%’ was not prima facie obvious in view of a cited range of 5-8%. Mathematically, this means that the minimum value was found to be 1.625 times the maximum value of the cited range” (Applicant Arguments, Page 13).
As further argued by Applicant, “the lower limit of Winter is 1.67 times the upper limit of the instant claim” and, thus “the claimed difference is greater than the difference described in the MPEP” (Applicant Arguments, Page 13).
The argument is not found persuasive. At the outset, In re Lilienfeld affirmed the rejection of “claims… to an alkali cellulose with varying higher ranges of water (e.g., ‘not substantially less than 13%,’ ‘not substantially below 17%,’ and ‘between about 13 and 20%’” as prima facie obvious based on a prior art teaching of “an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range”. Accordingly, based on Applicant’s own reasoning, “[m]asthmatically, this means that” a claimed minimum value (i.e., 17%) that was found to be 2.125 times the maximum value of the prior art range (i.e., 8%) is prima facie obvious (Applicant Arguments, Page 13). As such, it is maintained that, at minimum, the instantly claimed maximum values of 3% (claims 1-3, 10 and 15) and 2.5% (claim 19), which differ from the minimum value taught by Winter et al – wherein Winter et al teach “typical concentrations of the order of 5 to 10% by weight” (Paragraph 0016) – by 1.67 and 2.0 times, respectively, must also be prima facie obvious.
Moreover, as discussed above and in the basis of the rejection, Winter et al do not only teach “typical concentrations of the order of 5 to 10% by weight” (Paragraph 0016). Rather, Winter et al further disclose that “[m]uch lower concentrations than these may be used when the compounds are directly applied in the perfuming of the various consumer products mentioned” (Paragraph 0016). And, as discussed in the previous Action mailed on 8/13/2025, the claimed amounts of 3%, 2.5% or 1% “would reasonably be understood by one of ordinary skill in the aart as within the meaning of ‘much lower’ than 5%”.
Applicant, however, further argues that “Winter’s broad teaching of ‘Concentrations much lower than these can be used…’ is insufficient to establish a prima facie case of obviousness. That is, Winter does not provide any guidance or motivation to a person having ordinary skill in the art to decrease the amount of its perfuming ingredient to within the presently claimed range, or that such amount would be an arthropod control effective amount as presently claimed” (Applicant Arguments, Page 12).
The argument is not found persuasive. As further discussed in the previous Action mailed on 6/17/2025 (Paragraphs 24-25) and reiterated in the Action mailed on 8/13/2025, even assuming arguendo that:
(a) the claimed amounts of 3%, 2.5% and/or 1% are not sufficiently close to the 5 wt.% specifically mentioned by Winter et al to be considered prima facie obvious; and
(b) one of ordinary skill in the art would not reasonably understand the teaching in Winter et al that “[m]uch lower concentrations than these may be used when the compounds are directly applied in the perfuming of the various consumer products mentioned” (Paragraph 0016) to include the claimed amounts of of 3%, 2.5% and/or 1%;
it would have been prima facie obvious to determine the optimal amount of 2,5-dimethyl-2-indanemethanol to include in the compositions of Winter et al. As stated by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454 (CCPA): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the concentration of active ingredient in a perfume formulation is clearly a result-effective variable. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of 2,5-dimethyl-2-indanemethanol to include in the formulations of Winter in order to best achieve the desired results.
Lastly, regarding Applicant’s argument that Winter et al do “not provide any guidance or motivation to a person having ordinary skill in the art… that [the instantly claimed amount of its perfuming ingredient] would be an arthropod control effective amount as presently claimed” (Applicant Arguments, Page 12), Applicant is reminded that it is not necessary that the prior art suggest the combination of references to achieve the same advantage or result discovered by Applicant (in this case, arthropod and, more specifically, arachnid control). Rather, the reason or motivation to modify a reference to arrive at the claimed invention can be for a different purpose or to solve a different problem (for example, to provide various consumer products having a desired fragrance intensity). See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). The fact that Applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58 (Bd. Pat. App. & Inter. 1985).
For all the foregoing reasons, Applicant’s arguments are not found persuasive. The rejection of claims is MAINTAINED.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 10, 15 and 19-20 are MAINTAINED rejected under 35 U.S.C. 103(a) as being unpatentable over Winter et al (EP 1022265 (2007); of record - based on a previously attached machine translation).
Claim 1 is drawn to an arthropod (more specifically, an insect (claim 2) and/or arachnid (claim 3)) control composition comprising:
a compound of formula (I), which embraces the following compound species
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wherein n is 1; X is CH2; R1 is CHR7OR8 wherein R7 and R8 are each hydrogen atoms; R2 is methyl; R3 is a C1 hydrocarbon group (i.e., methyl); and R4, R5 and R6 are each hydrogen atoms (i.e., 2,5-dimethyl-2,3-dihydro-1H-inden-2yl)methanol, aka 2,5-dimethyl-2-indanemethanol (claims 10 and 15)); and
optionally, at least one arthropod control co-ingredient;
wherein the composition comprises the compound of formula (I) in amount of from 0.02 to 3 wt.% based on the total weight of the composition.
Winter et al teaches compositions “in the field of perfumery” (such as “perfumes, eau de toilette or aftershave lotions, as well as… soaps, shower or bath gels” and so on (Paragraph 0011)) comprising alcohols of formula (I) (Abstract), specifically wherein the alcohol is 2,5-dimethyl-2-indanemethanol (see, e.g., Paragraphs 0008, 0010 and 0020 (Example 1)). Moreover, Winter et al explicitly teach compositions comprising 2,5-dimethyl-2-indanemethanol in an amount of 37.5% by weight (Paragraphs 0043-0044, Example 5), 10% by weight (Paragraphs 0045-0046, Example 6), 10.4% by weight (Paragraphs 0047-0048, Example 7), and 8.51% by weight (Paragraphs 0049-0050, Example 8).
However, Winter et al do not specifically disclose embodiments wherein the amount of compound is from 0.02 to 3 wt.%, based on the total weight of the composition.
Yet, as discussed by MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (citing Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985)). The instantly claimed amount of 3 wt.% is considered to be sufficiently close to the amount of 5 wt.% specifically mentioned by Winter et al to be prima facie obvious.
Moreover, Winter et al further teach that “[m]uch lower concentrations than these may be used when the compounds are directly applied in the perfuming of the various consumer products mentioned” (Paragraph 0016), which a person of ordinary skill in the art would reasonably understand as including the instantly claimed amount of 3 wt.%.
And, finallly, as stated by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454 (CCPA): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the concentration of active perfuming ingredient in a perfume formulation is clearly a result-effective variable. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of 2,5-dimethyl-2-indanemethanol to include in the formulations of Winter in order to best achieve the desired results.
As such, claims 1-3, 10 and 15 are rejected as prima facie obvious.
Claim 19 is drawn to the arthropod control composition according to claim 1, wherein the composition comprises the compound of formula (I) in an amount of from 0.02 to 2.5 wt.%, based on the total weight of the composition.
For the same reasons as discussed above regarding the concentration of 0.02 to 3 wt.% as recited by claim 1, the concentration of 0.02 to 2.5 wt.% as recited by claim 19 is also prima facie obvious. Namely, because:
(a) as discussed by MPEP 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (citing Titanium Metals Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985)). The instantly claimed amount of 2.5 wt.% is considered to be sufficiently close to the amount of 5 wt.% specifically mentioned by Winter et al so as to be prima facie obvious;
(b) Winter et al further teach that “[m]uch lower concentrations than these may be used when the compounds are directly applied in the perfuming of the various consumer products mentioned” (Paragraph 0016), which a person of ordinary skill in the art would reasonably understand as including the instantly claimed amount of 2.5 wt.%; and/or
(c) as stated by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454 (CCPA): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))). In the instant case, the concentration of active perfuming ingredient in a perfume formulation is clearly a result-effective variable. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of 2,5-dimethyl-2-indanemethanol to include in the formulations of Winter in order to best achieve the desired results.
As such, claim 19 is also rejected as prima facie obvious.
Claim 20 is drawn to the arthropod control composition according to claim 1, wherein the composition comprises the compound of formula (I) in an amount of from 0.02 to 1 wt.%, based on the total weight of the composition.
For largely the same reasons as discussed above regarding the concentration of 0.02 to 3 wt.% as recited by claim 1 and the concentration of 0.02 to 2.5 wt.% as recited by claim 19, the concentration of 0.02 to 1 wt.% as recited by claim 20 is also prima facie obvious. Namely, because:
(a) Winter et al further teach that “[m]uch lower concentrations than these may be used when the compounds are directly applied in the perfuming of the various consumer products mentioned” (Paragraph 0016), which a person of ordinary skill in the art would reasonably understand as including the instantly claimed amount of 1 wt.%; and/or
(b) as stated by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454 (CCPA): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))). In the instant case, the concentration of active perfuming ingredient in a perfume formulation is clearly a result-effective variable. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal concentration of 2,5-dimethyl-2-indanemethanol to include in the formulations of Winter in order to best achieve the desired results.
As such, claim 20 is also rejected as prima facie obvious.
Claim Objections
Since the search has not been expanded beyond the single additional species rejected above, claim 18 (which is directed Applicant’s elected composition but which does not include the single additional species) is MAINTAINED objected to as depending from a rejected base claim, and has not been further searched.
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 C.F.R. 1.114 and could have been finally rejected on the grounds and art of record in the next Office Action if they had been entered in application prior to entry under 37 C.F.R. 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a Request for Continued Examination and the submission under 37 C.F.R. 1.114. See MPEP 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. 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 C.F.R. 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 mailing date of this Final Action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm ET.
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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/CRAIG D RICCI/Primary Examiner, Art Unit 1611