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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 30 December 2025 has been entered.
Claim Rejections - 35 USC § 112(b)
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 14 is 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.
The term “minimizing ” in claim 14 is a relative term which renders the claim indefinite. The term “minimizing” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4-7, 11-15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Goussevskaia et al. (herein referred to as Goussevskaia, WO 2009033247 A2) in view of Miller (“Oxidation of food grade oils”) with evidence from Ren et al. (herein referred to as Ren, “Study on the optimization of the decolorization of orange essential oil”)
With regard to Claim 4, Goussevskaia teaches the chemical deterpenation by means of the catalytic oxidation of the essential oils of citric fruits (the citrus oil of the instant claims) through a controlled catalytic oxidation (abstract). Goussevskaia teaches oxidizing a citrus essential oil, specifically an orange essential oil, wherein the oxidation step include oxygen gas to contact the essential oil (page 4 lines 5-15, page 5 lines 12-14). Thus reading on the instant claims “ventilation” step.
Goussevskaia teaches the method focuses on the oxidation of limonene a
monoterpenic chemical compound which is present in orange essential oils in an amount from 90 to 96 wt% (page 1 lines 6-9 and lines 18-19). It is well known in the art that the decrease of limonene results in a decolorized orange essential oil. This is evidenced by Ren that shows a decrease in limonene and an increase in oxygenated compounds, linalool and citral, results in a decolorized orange essential oil (“Color stability of crude and discolored orange
essential oil treated with activated clay”). Therefore, one with ordinary skill in the art would recognize that the method taught by Goussevskaia would inherently decolorize the orange essential oil. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.
Goussevskaia teaches limonene is highly reactive and easily decomposed under the action of light, humidity, and high temperatures (page 1 lines 18-20). However Goussevskaia is silent to the light shielding condition. Applicant does not provide a definition for light shielding in their specification. Therefore, the examiner is interpreting the meaning by what would be common in the art, which means light shielding is defined as light is blocked either partially or fully from the reaction.
Miller teaches oxidation progresses at different rates depending on factors such as temperature, light, availability of oxygen (“What is oxidation?”). When oil oxidizes it produces a series of breakdown products in stages, starting with primary oxidation products (peroxides, dienes, free fatty acids), then secondary products (carbonyls, aldehydes, trienes) and finally tertiary products (“What is oxidation?”). Miller teaches light (UV) can trigger the oxidative degenerative cascade. Reduce the exposure of the oil to direct light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing of the claimed invention to modify Goussevskaia in view of Miller to control the exposure of the oil to light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”). By using brown glass/plastic containers or black plastic bags, Miller is clearly teaching the technique of light shielding. Through routine optimization, one with ordinary skill in the art would be able to find the correct amount of light exposure or amount of light shielding (i.e., Lux) necessary to progress the oxidative process enough to prevent or encourage the production of the ideal primary, secondary, or tertiary products desired. See MPEP 2144.05(II)(A) "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With regard to Claim 5, Goussevskaia teaches the ventilation step is performed within a range of 25° to 120℃ (page 5 lines 27-32). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);
With regard to Claim 6, Goussevskaia teaches using an oxygen bubbler for the ventilation step and mechanically stirring (page 5 lines 27-32). It would have been obvious to one with ordinary skill in the art that through routine optimization of the oxygen bubbler and mechanical stirring to adjust the flow and stirring to achieve the desired volume of oxygen gas. See MPEP 2144.05(II)(A) "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to Claim 7, Goussevskaia teaches stirring the essential oil (page 5 lines 27-32).
With regard to Claim 11, Goussevskaia teaches the claimed method and therefore would inherently produce a decolorized oil. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
With regard to Claims 12 and 13, Goussevskaia teaches the method produces fragrant compounds for cosmetics, cleaners and personal hygiene products, flavor intensifiers for beverages and other food products (page 5 lines 15-19).
With regard to Claim 14, Goussevskaia teaches oxidizing a citrus essential oil, specifically an orange essential oil, wherein the oxidation step include oxygen gas to contact the essential oil (page 4 lines 5-15, page 5 lines 12-14) and stirring the essential oil (page 5 lines 27-32). Thus reading on the instant claims “ventilation” step.
Goussevskaia teaches the method focuses on the oxidation of limonene a monoterpenic chemical compound which is present in orange essential oils in an amount from 90 to 96 wt% (page 1 lines 6-9 and lines 18-19). It is well known in the art that the decrease of limonene results in a decolorized orange essential oil. This is evidenced by Ren that shows a decrease in limonene and an increase in oxygenated compounds, linalool and citral, results in a decolorized orange essential oil (“Color stability of crude and discolored orange essential oil treated with activated clay”). Therefore, one with ordinary skill in the art would recognize that the method taught by Goussevskaia would inherently decolorize the orange essential oil. See MPEP 2112.01(I) Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.
Goussevskaia teaches limonene is highly reactive and easily decomposed under the action of light, humidity, and high temperatures (page 1 lines 18-20). However Goussevskaia is silent to the light shielding condition. Applicant does not provide a definition for light shielding in their specification. Therefore, the examiner is interpreting the meaning by what would be common in the art, which means light shielding is defined as light is blocked either partially or fully from the reaction.
Miller teaches oxidation progresses at different rates depending on factors such as temperature, light, availability of oxygen (“What is oxidation?”). When oil oxidizes it produces a series of breakdown products in stages, starting with primary oxidation products (peroxides, dienes, free fatty acids), then secondary products (carbonyls, aldehydes, trienes) and finally tertiary products (“What is oxidation?”). Miller teaches light (UV) can trigger the oxidative degenerative cascade. Reduce the exposure of the oil to direct light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing of the claimed invention to modify Goussevskaia in view of Miller to control the exposure of the oil to light by using brown glass/plastic containers or black plastic bags (“Preventing Oxidation”). By using brown glass/plastic containers or black plastic bags, Miller is clearly teaching the technique of light shielding. Through routine optimization, one with ordinary skill in the art would be able to find the correct amount of light exposure or amount of light shielding (i.e., Lux) necessary to progress the oxidative process enough to prevent or encourage the production of the ideal primary, secondary, or tertiary products desired. See MPEP 2144.05(II)(A) "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With regard to Claim 15, Goussevskaia teaches the ventilation step is performed within a range of 25° to 120℃ (page 5 lines 27-32). See MPEP 2144.05(I) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);
Continuing, Goussevskaia teaches using an oxygen bubbler for the ventilation step and mechanically stirring (page 5 lines 27-32). It would have been obvious to one with ordinary skill in the art that through routine optimization of the oxygen bubbler and mechanical stirring to adjust the flow and stirring to achieve the desired volume of oxygen gas. See MPEP 2144.05(II)(A) "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With regard to Claims 17 and 18, Goussevskaia teaches the essential oil is an orange oil (page 4 lines 5-15)
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 30 December 2025, with respect to the rejection(s) of claim(s) 4-7 and 11-16 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Goussevskaia (WO 2009033247 A2) and Miller (“Oxidation of food grade oils”) with evidence from Ren et al. (herein referred to as Ren, “Study on the optimization of the decolorization of orange essential oil”).
The new rejection does not rely on Reference #1 or have any mention of essential oils containing azulene. The new rejection teaches citrus oil, and specifically orange oil, as claimed in instant claim 1 and instant claims 17-18. Therefore, any argument in reference to azulene and Reference #1 is moot.
With regard to arguments in reference of the combination of Reference #1 and Miller, these arguments are now moot as a result of the new grounds of rejection.
Conclusion
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/K.I.D./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792