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 .
Priority
This application, filed December 17, 2021, is a national stage application of PCT/IB2020/055766, filed June 19, 2020, which claims the benefit of U.S. provisional application 62/863901, filed June 20, 2019.
Status of the Application
Applicant’s communications, received January 16, 2026, are acknowledged.
Claims 1, 3-7, 17-25, and 27-28 are pending and examined on the merits herein.
Withdrawn Rejections
Applicant’s communications, received January 16, 2026, with respect to the nonstatutory double patenting rejection of claims 1, 3-7, 17-25, and 27-28 as unpatentable over the claims of U.S. Patent 11,896,702 in view of Ellena, has been fully considered and found to be persuasive to remove the rejection because Applicant has submitted a terminal disclaimer disclaiming any extension of patent term beyond that of U.S. Patent 11,896,702. Therefore the rejection is withdrawn.
The following are new grounds of rejection:
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-7, 17-19, and 23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Claims 1 and 3-7 are drawn to a fragrance composition consisting essentially of: at least one fragrance compound; a fragrance fixative; and a solvent, wherein the solvent is selected from alcohol, hydroalcohol, water, propylene glycol, or a combination thereof; wherein the fragrance fixative is a glycoside selected from a Steviol glycoside, a glucosylated Steviol glycoside, a derivative of a Steviol glycoside, a derivative of a glucosylated Steviol glycoside, or combinations thereof.
Claims 17-21 and 23 are drawn to a non-comestible product comprising a perfume, the perfume consisting essentially of water, a solvent, a fragrance fixative, and a fragrance compound; wherein the fragrance fixative is a glycoside; wherein a perceived fragrance of the perfume comprising the glycoside is substantially the same as the perceived fragrance of a similar perfume that lacks the glycoside, and wherein an amount of the fragrance compound needed to produce a desired fragrance is reduced when compared to the similar fragrance compound that lacks the glycoside.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Subject matter that is not patent eligible is determined by evaluating a claim for patentability based on the eligibility test set forth below:
(1) Is the claim directed to one of the four statutory categories, i.e., a process, machine, manufacture, or composition of matter? For the instant claims, the answer is “Yes” because the claims are directed to a composition of matter.
(2a) Prong 1: Does the claim recite or involve a judicial exception? The answer is “Yes” because the fragrance composition of claim 1 and the perfume of claim 17 each consist essentially of at least one fragrance compound, a fragrance fixative selected from a Steviol glycoside, and a solvent.
Both fragrance compounds and Steviol glycosides are naturally occurring compounds. As one example, Stevia rebaudiana contains both fragrance compounds and Steviol glycosides. As evidence, Barra (U.S. pre-grant publication no. 20120064219 A1; cited in PTO-892) teaches that Stevia rebaudiana Bertoni is a sweet-tasting plant, and the leaves contain a complex mixture of natural sweet diterpene glycosides. Barra teaches that Steviol glycosides are components of Stevia that contribute sweetness. Barra teaches that typically, these compounds are found to include stevioside (4-13% dry weight), steviolbioside (trace), the rebaudiosides including rebaudioside A (2-4%), rebaudioside B (trace), rebaudioside C (1-2%), rebaudioside D (trace), and rebaudioside E (trace), and dulcoside A (0.4-0.7%). Finally, Barra teaches other nonsweet constituents have been identified in the leaves of stevia plants, including labdane, diterpene, triterpenes, sterols, flavonoids, volatile oil constituents, pigments, gums and inorganic matter (p. 2, [0045]; lines 1-13).
Martelli (Martelli, A.; Frattini, C. Flavour and Fragrance Journal 1987, vol. 1, pp. 3-7; cited in PTO-892) teaches essential oils with aromatic properties that have been extracted from Stevia rebaudiana Bertoni leaves (p. 3, Title; p. 3, right column, Plant Material section). Martelli teaches several volatile compounds isolated from both dried and fresh leaves of Stevia rebaudiana Bertoni, including α-pinene, β-pinene, and limonene (p. 6, Table 1).
As further evidence that α-pinene, β-pinene, and limonene are fragrance compounds, Kim (Kim, M; et al. European Journal of Integrative Medicine 2018, vol. 17, pp. 33-39; cited in PTO-892) teaches that pinenes have been used for centuries in the cosmetic industries especially for flavor and fragrance purpose (p. 34, left column, first full paragraph, lines 4-9). Kim further teaches that (+)-α-pinene has a coniferous and turpentine-like smell, whereas (+)-β-pinene has a fresh and woody-like smell (p. 38, left column, fourth paragraph, lines 1-3).
Moreover, Kim teaches that the isomers of carvone, linalool and limonene, have different fragrance qualities and intensities (p. 33, right column, first full paragraph, lines 3-4), indicating these compounds are fragrances.
Therefore, in view of Barra, Martelli, and Kim, the leaves of Stevia rebaudiana comprise both Steviol glycosides and fragrance compounds, such as α-pinene, β-pinene, and limonene. Because a plant leaf also includes the solvent water, the fragrance composition of claims 1 and 3-7 and the perfume of claims 17-21 and 23 are each drawn to a judicial exception.
Regarding the characteristics of the claimed compositions, the closest counterpart to the claimed composition are the composition’s components as found in the naturally occurring leaf of Stevia rebaudiana. However, there is no evidence that formulation of these components as the claimed fragrance composition or perfume would result in a product with markedly different characteristics than the nature-based counterpart. In this instance, the Steviol glycoside, fragrance compound (e.g., α-pinene, β-pinene, or limonene), and solvent have the same chemical and physical properties as when found in nature, and thus lack markedly different characteristics. See MPEP 2106.04(c).
(2a) Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? The answer is “No.”
Claims 1-3 and 7 are drawn to a fragrance composition, and do not recite an application that might integrate the judicial exception into a practical application.
Claims 17-21 and 23 are drawn to a non-comestible product comprising a perfume. However, there is no evidence that formulation of the perfume as any non-comestible product would integrate the judicial exception into a practical application.
However, formulation of the non-comestible product as a lotion, a soap, or a cosmetic, as recited in claim 21, or as a dishwashing detergent, a surface cleaner, an air freshener, a softener, a bleach, or a laundry detergent, as recited in claim 22, would be considered additional elements that integrate the judicial exception into a practical application.
Regarding the formulations of a perfume, toilet water, or body care product recited in claim 21, these formulations are considered as intended uses of the non-comestible product comprising a perfume recited in claim 17, and do not require additional elements that would integrate the product into a practical application.
(2b) Does the claim as a whole recite additional elements that amount to something significantly more than the judicial exception(s)? The answer is “No.” Claim 1 is drawn to a composition is a fragrance composition that consists essentially of the components recited above. Claim 17 is drawn to a non-comestible product comprising a perfume, the perfume consisting essentially of the components recited above
Claims 1 and 17 require a perceived fragrance of the fragrance composition or perfume with the glycoside is substantially the same as the perceived fragrance or perfume of a composition that lacks the glycoside component, and wherein an amount of the fragrance composition or perfume needed to produce a desired fragrance is reduced when compared to the similar composition that lacks the Steviol glycoside. However, these limitations are interpreted herein as inherent to the composition comprising Steviol glycosides and fragrance compounds, absent evidence to the contrary.
As evidence, the instant specification states: “The use of Steviol glycosides, glucosylated steviol glycosides and its derivatives as a fixative in a fragranced products increases the lasting power of the fragrance dramatically. The increase of the lasting power does not distort the character of the fragrance. In other words, the perceived fragrance of a fragrance composition comprising the glycoside is substantially the same as the perceived fragrance of a similar fragrance composition that lacks the glycoside component” (p. 6, [0032]). Accordingly, these additional limitations of claims 1 and 17 are interpreted herein as inherent to a fragrance composition consisting essentially of the components recited in claim 1, and do not amount to something significantly more than the judicial exception.
Therefore, there is nothing to suggest that the fragrance composition of claims 1 or 17 has any particular change in structure or function or any other characteristic resulting in something markedly different that would confer eligibility on this naturally occurring product.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 recites the limitation "the fragrance composition comprising the glycoside" in line 9 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is drawn to a fragrance composition consisting essentially of a fragrance compound, a fragrance fixative, and a solvent, wherein the fragrance fixative is a glycoside, and thus “the fragrance composition comprising the glycoside” lacks antecedent basis.
Because claims 3-7 depend from claim 1 and fail to cure this deficiency, claims 3-7 are also indefinite.
Claim 17 recites the limitation "the perfume comprising the glycoside" in line 4 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 is drawn to a non-comestible product comprising a perfume, the perfume consisting essentially of water, a solvent, a fragrance fixative, and a fragrance compound, and thus “the perfume comprising the glycoside” lacks antecedent basis.
Because claims 18-23 depend from claim 1 and fail to cure this deficiency, claims 18-23 are also indefinite.
Claim 4 recites: “The fragrance composition of claim 1, wherein the glycoside is a Steviol glycoside selected from Rebaudioside A, Rebaudioside B, Rebaudioside C, Rebaudioside D, Rebaudioside E, Rebaudioside F, Rebaudioside M, Rebaudioside N, Rebaudioside O.”
This is an improper Markush group because there is no conjunction between “rebaudioside N” and “rebaudioside O,” and it is unclear whether the list recited in the claim is complete.
Please revise claim 4 to recite: “The fragrance composition of claim 1, wherein the glycoside is a Steviol glycoside selected from Rebaudioside A, Rebaudioside B, Rebaudioside C, Rebaudioside D, Rebaudioside E, Rebaudioside F, Rebaudioside M, Rebaudioside N, or Rebaudioside O.”
Conclusion
Claims 1, 3-7, 17-23 are rejected.
Claims 24-25 and 27-28 are allowed.
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/B.M.B./ Examiner, Art Unit 1693
/ANDREA OLSON/ Primary Examiner, Art Unit 1693
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